Trade marks: infringement: informative or misleading use

Summary

The Court of Appeal has held that that a repair company's use of a car trade mark was misleading rather than informative and infringed the trade mark.

Background

A registered trade mark owner of an EU trade mark (EUTM) has the right to prevent unauthorised third parties from using, in the course of trade, an:

• Identical sign for identical goods or services to those for which the EUTM is registered (Article 9(1)(a), EUTM Regulation (207/2009/EC)) (Article 9(1)(a)).
• Identical or similar sign for identical or similar goods or services to those for which the EUTM is registered, where there exists a likelihood of confusion or association on the part of the public ((Article 9(1)(b), EUTM Regulation (207/2009/EC)) (Article 9(1)(b)).
• Identical or similar sign to the EUTM where the EUTM has a reputation in the EU, and where the use of the sign is without due cause and takes unfair advantage of, or is detrimental to, the distinctive character or repute of the EUTM (Article 9(1)(c), EUTM Regulation) (Article 9(1)(c)).

In relation to ordinary consumer products the court is not normally assisted by the evidence of individual consumers to establish what impression was conveyed by a sign (Marks & Spencer v Interflora, www.practicallaw.com/2-523-7850).

Facts

B was the manufacturer of motor vehicles and the registered proprietor of EUTMs for the text "BMW" registered for maintenance and repair of cars, motors, engines and parts of the goods; cleaning of automobiles; and installation services (BMW mark); and a figurative "Roundel" mark incorporating the text BMW and registered for the same services as the BMW mark.

Although T specialised in the repair and maintenance of BMW cars, it had no formal connection with B other than as buyer and user of B's manufactured spare parts.

B sued T for trade mark infringement.

The Intellectual Property Enterprise Court (IPEC) allowed some of B's claims. However, it dismissed other claims for infringement of the BMW mark in relation to likelihood of confusion and taking an unfair advantage under Article 9 of the EUTM Regulation.

B appealed in relation to this alleged infringement which concerned the use of the BMW mark in conjunction with T's trading name "Technosport": on shirts worn as work clothing; in relation to T's Twitter account with the user name "@TechnosportBMW; and on T's van which carried the words "TECHNOSPORT – BMW".

Decision

The court allowed the appeal in relation to likelihood of confusion. It was therefore unnecessary to decide the issue of unfair advantage.

It was necessary to distinguish between uses that conveyed the true message "my business provides a service which repairs BMWs or uses genuine BMW spare parts" (informative use) and those that conveyed the false message "my repairing service is commercially connected with BMW" (misleading use). Which of these messages was conveyed depended on a close consideration of the detail and context of the use.

The IPEC had erred by rejecting T's case on the basis that it ought to have adduced further evidence to establish that the juxtaposition of BMW with a dealer's name would convey the impression that the dealer was authorised. Deciding whether the use of the "Technosport BMW" signs was informative use or misleading use did not require B to prove that all authorised dealers used the trading style "Dealer BMW", nor that whenever the average consumer saw the dealer's name juxtaposed in any context with the BMW mark they assumed that it referred to an authorised dealer. The issue was whether that impression was conveyed by the sign Technosport BMW, or that there was a risk that it would be.

Evidence of actual consumers was not required. The court had to make its own assessment, taking into account all relevant circumstances. If the IPEC had done so, it would have been clear in relation to each of the uses that the use of the "Technosport BMW" signs was more than informative use and carried the risk that it would be understood as misleading use.

Considering the shirts on their own without the Roundel mark, there was no immediate context to indicate that it was merely informative use; it was simply a trading style which conveyed the impression of authorisation by B.

There was also nothing in the sign "Technosport-BMW" to indicate that the sign was being used informatively on the van. The average consumer would not take the word technosport in the website address as the trading name of the company; they would be more likely to understand that the name had been abbreviated in the website address.

While the Twitter account was not B's strongest point, the use was still an infringement too. It was another example of the use of BMW within a trading name in a way which was likely to give the impression of authorisation, consistent with the use on the van and the shirt; it was not mere informative use.

Comment

The court noted that while it might be difficult to determine whether, in the case of a trade mark registered for goods, the name of a business was being used in relation to the goods sold by that business, there was normally no such problem in the case of a service mark; the name of the business as the provider of the services was much more readily taken to be used in relation to the services offered.

The distinction between informative and misleading use may provide a useful test in likelihood of confusion cases in the context of the provision of services.

B's appeal was successful because too much weight had been placed on the need for evidence to show a likelihood of confusion. In relation to ordinary consumer products and services the court can and should make up its own mind on confusion without referring to evidence of experts or consumers.

Case: Bayerische Motoren Werke Aktiengesellschaft v Technosport London Ltd and another [2017] EWCA Civ 779.

First published in the August 2017 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.