+353 (0) 404 37420

Successful Injunction in Trade Mark Infringement and Passing Off in use of name of “BMWcare””

The High Court recently published the case of Bayerische Moteren Werke AG -v- Ronayne t/a BMWCare[2013] IEHC 612 concerning a judgement delivered by Mr Justice Ryan on 19th December 2013. We have referred extensively to extracts from the judgment which is available on the courts website here.BackgroundThis case concerned a claim for infringement of trade marks and passing off. The plaintiff in this case BMW was a worldwide recognised brand who holds numerous trade marks including community trade marks.The plaintiff carried on its business in Ireland through a network of authorised dealers and service/repair agents. The defendant operated a garage in the West of Ireland and began to use the name “BMWcare in his email address in 2005 and also purchased the domain name “bmwcare.com” as well as registering “BMWcare” as a business name. The defendant provided that his plan was to ensure people did not think he was connected to BMW and that he always held himself out as independent. The defendant had also used the BMW roundel logo on his webpage for a time but this was subsequently removed. The plaintiff contended that the defendant’s use of the name and/or brand BMWcare or some variant thereof as used on his website and business stationery and generally in connection with his business constituted infringement of its trade marks and multiple breaches of the Trade Marks Act, 1996 and the tort of passing off.ProceedingsThe plaintiff issued proceedings claiming1. An Order pursuant to s. 18 of Trade Marks Act, 1996 (as amended) or Article 102 of Council Regulation 207/2009 restraining the defendant from infringing the plaintiff’s CTMs.2. An Order directing the defendant to cease from passing off business and/or services connected with the plaintiff.3. An Order transferring, at no cost to the plaintiff, the domain names complained of.4. An Order directing the defendant to cease using the intellectual property of the plaintiff when conducting his business.5. An Order directing the defendant not to register any company including the mark ‘BMW’.6. An Order that the defendant cancel or remove name BMWcare.7. An Order that the defendant immediately deliver up and destroy all stationery, promotional materials and other materials bearing the BMW TM.8. Damages including aggravated and/or exemplary for infringement of CTM.9. Damages for passing off plaintiff’s business and/or services10. Damages for conspiracy by the defendant to intentionally interfere with the economic interests of the plaintiff.11. In the alternative, at the plaintiff’s option, an account of profits of the defendant.12. Interest, further relief and costs.The defendant denied the plaintiff’s allegations and pleaded that the plaintiff was estopped from bringing proceedings by reason of acquiescence in his use of the name BMWCARE, the device mark and elements of the word marks. The defendant admitted lawful registration of the name BMWcare; incorporation of BMWcare into his domain names and use of plaintiff’s roundel in the course of trade bu these acts amounted to non-infringing use of the marks under s. 15(2) of the Trade Marks Act, 1996.AnalysisAfter detailed review of submissions of both sides the High Court considered the relevant sections of the Trade Mark legislation, caselaw and passing off.(a) Trade Mark Act, 1996The court noted Section 14(1) concerning use of an identical sign in relation to goods or services identical with those for which the mark is registered and noted that “BMW specialist” was one of the advertised descriptions considered and permitted by the European Court of Justice in BMW v. Deenik case C-63/97.Section 14(2) provides that it is wrongful to use an identical sign in relation to similar goods or services or a similar sign for identical goods or services, if there is likelihood of confusion. The court considered Kitchin LJ in Specsavers Intl v Asda Stores Ltd [2012] EWCA Civ 24 which summarised the key principles including that the court looks at the question globally through the eyes of the average reasonably observant consumer who cannot directly compare the sign and the mark. The question is one of overall impression and not just the dominant elements; the visual, aural and conceptual similarities are assessed; lesser similarity of the sign and the mark may be offset by greater similarity between the goods or services and vice versa.The court noted Section 61(2) whereby the proprietor of a trade mark is entitled to protection under the Paris Convention as a well-known trade mark shall be entitled to restrain by injunction the use in the State of a trade mark which, or the essential part of which, is identical or similar to the proprietor’s mark, in relation to identical or similar goods or services, where the use is likely to cause confusion.Section 15 of the 1996 Act permits use of a trade mark in a number of circumstances including where it is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts, provided that such use is in accordance with honest practices in industrial and commercial matters.Section 8 prohibits registration of, inter alia, trade marks which are devoid of any distinctive character and also trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.The Court referred to three cases made in argument including BMW v. Deenik case C-63/97; Porsche v. Van Den Berg, judgment 15th January, 2013, Hague Appeal Court; Toyota v. Tabari, US Court of Appeals, 9th Circuit – 8th July, 2010.In Deenik the European Court of Justice dealt with the question as to whether expressions such as “repairs and maintenance of BMW’s”, “BMW specialist” or “specialised in BMW’s” could lawfully be used. Here Mr. Deenik ran a garage and specialised in the sale of second hand BMW cars and in repairing and maintaining them but was not part of the BMW dealer network. The court concluded (a) the use of another’s trademark for the purpose of informing the public of the repair and maintenance of goods covered by that mark is authorised on the same conditions as those applying where the mark is used for the purpose of informing the public of the resale of goods covered by the mark and, consequently, (b) “Articles 5 to 7 of the directive do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trademark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the repair and maintenance of such goods, unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trademark proprietor, and in particular that the reseller’s business is affiliated to the trademark proprietor’s distribution network or that there is a special relationship between the two undertakings.”The case of Porsche v. Van Den Berg was very close to the circumstances that arise in this case. The court found substantially in favour of Porsche and summarised the following principles:(a) There is no honest use when the trademark is used in such a way that the impression can be created that there is a commercial connection between the third party and the trademark proprietor(b) In particular that the company of the third party belongs to the distribution network of the proprietor or(c) That there is a special relationship between the two businesses – for these propositions the court cited Deenik case C-63/97.(d) Citing the case of Amheuser-Busch C-245/02, in considering honest standards in industrial or commercial practice in relation to the use of a trade name it is necessary to consider subpara. (i) whether the relevant public or at least a substantial part of it would understand the use of the trade name as an indication of a connection and subpara. (ii) the extent to which the third party must have been aware of it.(e) The third party might profit in the marketing of its goods from the reputation of the trademark in the Member State.The court concluded that the use by Van den Berg of the commercial signs assessed on the basis of the criteria that it set out above did not constitute honest use.The High Court then considered the United States 9th Circuit Federal Appeals Court decision in Toyota v. Tabari: Toyota Motor Sales, USA Inc. v. Tabari 610 F.3d 1171, 1176 (9th Cir. 2010)The plaintiff in that case was the exclusive distributor of Lexus cars in the United States and the Tabari’s used the Lexus symbol design mark on their website. The test that the court applied asked (i) whether the product was “readily identifiable” without use of the mark; (ii) whether the defendant used more of the mark than necessary; or (iii) whether the defendant falsely suggested that he was sponsored or endorsed by the trademark holder. The court applied this test to the facts of the case and held that the Tabari’s were not infringing the trademark rights of Toyota.Relevant evidence and ConclusionsThe Court observed that the plaintiff had established its names and its position in the Irish and international markets with its trademarks and that there was am established pattern of sales of some significance. The fact that the defendant’s business name was included on a mailing list marketing BMW goods did not constitute acquiescence. Justice Ryan observed”….It is irrational and wholly unjustified to fix the proprietor of a trade mark with unintended and unknown legal consequences of knowledge and approval of every communication that may emanate from its own or associated businesses for any number of purposes…”.The Court concluded that BMWCARE was a use of the plaintiff’s trade marks and constituted infringement unless justified or excused. The question then arose as to whether the defendant’s use of the plaintiff’s mark was legitimate under section 15 (2). The Court noted that the case law provided a clear answer and Justice Ryan noted that he was in agreement with the analysis by The Hague Court in Porsche v Van den Berg. Justice Ryan observed that Mr Ronayne had gone beyond Mr Van den Berg. Whilst he was entitled to inform the public that he was a BMW specialist but this could not be incorporated into his name.The Court further observed that section 15(2) allowed use of a trade mark to describe a person’s business if it was in accord with honest practice. This does not permit somebody to create a business out of another’s name and trade mark. Justice Ryan observed “BMWCARE does just that“.The most fundamental question was whether the defendant was entitled to use the name BMWCARE. The Court observed that “when one looks at the page generally and specifically in its separate parts, it is indicative of an association with BMW and is indeed suggestive of a commercial connection.” Justice Ryan observed that the disclaimers on the website were hopelessly inadequate and ….”…the declaration of independence is quite insufficient to disturb the impression of commercial connection“.The use of the defendant’s name BMWCARE asserted a commercial connection with BMW which was misleading to consumers and damaging to BMW. It constituted infringement of trade marks and the tort of passing off. The Court further observed that the BMW family of marks had a reputation in the State and referred to the case of L’Oreal V Bellure [2009] EU ECJ C – 487/07 as authority that any one of three kinds of injury that a trade mark may suffer is sufficient for the proprietor’s claim to succeed.Passing Off Justice Ryan referred to Lord Oliver of Aylemerton in his speech in Reckitt & Colman v Borden Inc [1990] 1 WLR 491 at 499 as follows:“The law of passing off can be summarised in one short general proposition – no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff’s identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant’s misrepresentation that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.”Justice Ryan concluded that the plaintiff had clearly established trade mark infringement and also demonstrated the three elements to establish that the defendant has been and is engaged in passing off his services as those of the plaintiff by the use of his website.SummaryJustice Ryan ordered that:The plaintiff is entitled to injunctions restraining the defendant from using the name “BMWCARE” in that or other typographical variants in his business or on his website, restraining the use generally of that website in its present form, restraining the use of the various domain names used or acquired by the defendant that include BMW in them.

Scroll to Top