Bayerische Motoren Werke Aktiengesellschaft (BMW) v Round And Metal Ltd & Anor

Article 110(1) of the Community Designs Regulation operates as an exception to registered design rights. The defendant bears the burden of proving that the exception applies.

The exception is confined to component parts whose design is dependent on the appearance of the complex product. It applies only where the part is normally used for repair and restoration of the product’s original appearance. Replica alloy wheels generally fall outside the exception where consumers can choose different designs and the wheels are principally used to upgrade, rather than repair, the vehicle.

Trade mark use may create infringement through actual or post-sale likelihood of confusion. Spare-parts wording is insufficient where use of the mark is unnecessary or contrary to honest commercial practices.

BMW brought claims against Round and Metal Ltd and Philip David Gross concerning replica alloy wheels and associated BMW and MINI logos. The claims alleged infringement of four Community Registered Designs, five Community Trade Marks and passing off.

The principal issue was the interpretation of Article 110(1) of the Community Designs Regulation, particularly the burden of proof, dependency on the appearance of the complex product, the purpose for which a component was used, and restoration of its original appearance. Subsidiary issues concerned trade mark infringement, statutory defences and exhaustion. The court also considered counterclaims arising from the detention of wheels and a pre-action letter.

1. Community designs. Article 110(1) operates as an exception to the rights conferred by registration. It does not prevent registration of the design. The defendants therefore bore the burden of establishing that the exception applied.
2. Article 110(1) must be construed in accordance with recital (13). It is restricted to component parts whose design is dependent on the appearance of the complex product, in other words parts which must match the overall design. Alloy wheels did not satisfy that requirement because customers could choose wheels of different designs. A set of four wheels was not itself a complex product within Article 3(c).
3. The purpose requirement is objective. The court must consider the normal use of the component, including the position of the supplier, repairer and end user. The replica wheels were principally sold in sets, were larger and technically different from standard wheels, and were marketed for upgrading vehicles. They were therefore not normally used for repair.
4. Original appearance means the appearance supplied by the manufacturer or authorised dealer. The replica wheels were used to improve appearance rather than restore that appearance. Article 110(1) consequently did not apply, and all four Community Registered Designs were infringed.
5. Community trade marks. Supplying logo stickers with replica wheels constituted use of the signs in relation to the wheels. There was a real likelihood of confusion, including post-sale confusion by later purchasers who might regard BMW logos on the wheels as indicating genuine BMW wheels. The eBay listings similarly infringed the relevant marks.
6. The Article 12(c) defence did not apply because use of the marks was unnecessary to indicate intended purpose; wording such as “BMW style” was sufficient. The Article 12(b) defence also failed because the use was not in accordance with honest practices. Article 13(1) was irrelevant because the case did not concern exhaustion.
7. The passing off claim was not determined because infringement had already been established and the instruments-of-deception issue had not been argued. The counterclaims were dismissed. Mr Gross was jointly liable for the infringements.