Coming to law with clean hands in the smoke of dirty emissions

legal_updates

Beware several major brands as well as BMW, seek to enforce protection of their Trade Marks.

Author: David Combes
Published:
Reading time: 3 minutes

This article is 6 years old.

Read our disclaimer keyboard_arrow_down

This website content is intended as a general guide to law as it applies to the motor trade. Lawgistics has taken every effort to ensure that the contents are as accurate and up to date as at the date of first publication.

The laws and opinions expressed within this website may be varied as the law develops. As such we cannot accept liability for or the consequence of, any change of law, or official guidelines since publication or any misuse of the information provided.

The opinions in this website are based upon the experience of the authors and it must be recognised that only the courts and recognised tribunals can interpret the law with authority.

Examples given within the website are based on the experience of the authors and centre upon issues that commonly give rise to disputes. Each situation in practice will be different and may comprise several points commented upon.

If you have any doubt about the correct legal position you should seek further legal advice from Lawgistics or a suitably qualified solicitor. We cannot accept liability for your failure to take professional advice where it should reasonably be sought by a prudent person.

All characters are fictitious and should not be taken as referring to any person living or dead.

Use of this website shall be considered acceptance of the terms of the disclaimer presented above.

How can an independent dealer make clear to prospective customers that he specialises in the repair and maintenance of particular makes of vehicles?

This question was the centre of a recent court case between BMW and a London car dealer (Bayerische Motoren Werke AG v Technosport London Lt 2016 EWHC 797 (IPEC)).

The dealer concerned used several of BMW’s Registered Trade Marks throughout his business including the logo and also the letters BMW.  He was a small independent BMW garage specialising in the repair and maintenance of BMW cars and claimed that the use of the Trade Marks merely conveyed the same.

The dealer used the BMW logo, on a facia board on the exterior of the premises, on a banner inside, on their van, on business cards.  Similar logos were on their website.

The Court decided that:- (1) the “average consumer” would associate the BMW logo with an authorised BMW dealer.  Its use, therefore, was a breach of trade mark and left the dealer open to a change of passing off.

As an independent trader how can you safely communicate with the public that you specialise in repairing any particular make?  BMW argued that the use of their Trade Mark, the letters “BMW” also infringed their rights.

The dealership had used the BMW mark in conjunction with their Trading Name on their shirt and their twitter account.

The Judge disagreed.

He HELD in this case that the use of BMW letters did not convey to the “average consumer” any implication that they were an authorised dealer.

In an earlier case Bayerische Motoren Werke AG v RK Deenik Case C-63/97) it had been decided that a firm advertising itself as “The BMW specialists“ on a facia board at the front of its premises did not infringe because in that content the use is not liable to affect any of the functions of the Trade Mark.  The sign was part of the accurate message that the services offered invoked particular expertise in relation to BMW vehicles.

To summarise

1)    You can use the brand name as a descriptive term eg BMW specialist

2)    You cannot use the brand name at all if it were to indicate you were authorised by the brand.  Here the Company associated BMW mark with their name. They got away with it because BMW failed to produce sufficient evidence to how the public were misled.

3)    You cannot use a brand logo without being held liable for “passing off” that you are authorised by, or have an economic link with that brand.

Beware several major brands as well as BMW, seek to enforce protection of their Trade Marks although not all of them are so enthusiastic when it comes to declaring emission figures.  Perhaps the independents should pursue them for the liability of their wrong doing which has been thrust upon them as eventual sellers of branded products with incorrect emission levels!!

Should you require any further information on using trademarks or logos within your adverts or signage Lawgistics members can contact the legal team.

David Combes

In remeberance of David Combes 1948 – 2020

Read more by this author

Getting in touch

You can contact us via the form or you can call us on 01480 455500.