BMW v Technosport London Ltd, George Agyeton [2016] EWHC 797 (IPEC)

11 May 2016

Author: Olivia O'Kane
Practice Area: Media and Defamation

BMW has been successful after commencing proceedings for trade mark infringement in a claim against Technosport London Limited in the Intellectual Property Enterprise Court (IPEC).

The First Defendant, Technosport London Limited (TLL) specialised in the repair and maintenance of BMW vehicles. The Claimant, BMW, commenced proceedings against TLL for Trade Mark infringement in relation to its use of three registered trade marks; the ‘BMW’ mark, the BMW Roundel and the M logo. BMW claimed that TLL had passed off repair services as being associated with, or approved by, BMW. BMW complained that the Second Defendant, Mr Agyeton, had worn a shirt with ‘BMW’ printed beneath the garage name and owned a Twitter account with the name ‘@TechnosportBMW.’ The Roundel had been displayed on signs inside and outside the garage premises, on business cards given to customers, on the outside of the company van; and two signs identical to the M logo had been displayed on the garage website.[1]  

BMW alleged that the use of the signs was an infringement of its corresponding trade mark pursuant to article 9(1)(a) and 9(1)(b) of Council Regulation (EC) No.207/2009, and of article 9(1)(c) in relation to the use of the roundel and the BMW mark.[2] In relation to passing off, BMW alleged that the use of the signs was likely to lead a substantial proportion of the public or trade to believe that TLL was providing the services of BMW as an approved BMW dealer.[3] TLL was not an authorised BMW dealer, but an independent garage. The lawful use of the Trade Marks is governed by a formal licence through a contract with BMW UK and only authorised dealers are permitted to use the trade marks.[4] It was argued that the signs were used to indicate that TLL used genuine spare BMW parts and that TLL was supplied with articles to promote the use of genuine BMW spare parts, the packaging of which bore the Roundel. It was explained that this had been part of a Genuine Parts Initiative Kit which had been issued to authorised dealers in 2013. The kits contained packaging and promotional items displaying the trade marks which would then be passed on to TLL’s customers.[5]

Mr Agyeton gave evidence that it had been good for his business to display the Roundel sign despite receiving correspondence from BMW UK in October 2006 bringign to his attention that he was not permitted to use the Trade Marks.[6] Judge Hacon found that the use of the Roundel signs conveyed to the average consumer that TLL was an authorised BMW dealer, and therefore took unfair advantage of the repute of the Roundel as it enhanced the ability of TLL to trade.[7] TLL’s use of the Roundel sign would have caused the average consumer to wonder whether TLL was an authorised BMW dealer, thereby affecting the origin function of the Roundel mark.[8]

In respect of the BMW mark, Judge Hacon took a different view and found that TLL’s use of the mark ‘BMW’ on Mr Agyeton’s shirt and Twitter account had not, and did not, convey anything to the average customer other than that TLL traded or specialised in the repair and maintenance of BMW vehicles. It was held to be insufficient to show that the use of the ‘BMW’ mark had given rise to an unfair advantage.[9]

The use of the M logo was deemed to be unlawful[10] as it was likely that the average consumer would have taken TLL’s use to mean that it was an authorised dealer.

Mr Agyeton was held to be jointly liable with TLL as the sole director and shareholder of the company for infringing the Trade Marks and passing off.

[1] Bayerische Motoren Werke AG v Technosport London Ltd, George Agyeton [2016] EWHC 797 (IPEC), paragraph 7

[2] Ibid, paragraph 9

[3] Ibid, paragraph 10

[4] Ibid, paragraph 18

[5] Ibid, paragraph 24

[6] Ibid, paragraph 36

[7] Ibid, paragraph 37

[8] Ibid, paragraph 29

[9] Ibid, paragraph 38

[10] Ibid, paragraph 31

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