Bayerische Motoren Werke AG v Technosport London Ltd & Anor

Use of a vehicle manufacturer’s mark by an independent repairer is lawful where it accurately describes the vehicles serviced and does not affect the mark’s functions. Prominent display of a device mark associated almost exclusively with authorised dealers may cause the average consumer to wonder whether an economic link exists. That uncertainty can adversely affect the origin function and constitute infringement. The objective effect of the use determines unfair advantage; subjective intention is not required. Consent to trade mark use is inferred only where facts unequivocally demonstrate renunciation of exclusive rights. A director who is the guiding mind of the infringing company may be jointly liable. Passing off requires a misrepresentation.

BMW claimed that Technosport London Ltd, an independent vehicle repair business, infringed three registered trade marks and passed off its services as BMW-approved. The disputed signs were the BMW word mark, the BMW Roundel and the M Logo, used on premises, vehicles, business materials, clothing, a website and a Twitter account. The defendants argued that the signs merely indicated specialisation in repairing BMW vehicles and the use of genuine BMW parts. They also alleged BMW’s consent and relied on arts 12(b) and (c) of the Council Regulation (EC) No. 207/2009. The issues included the average consumer’s perception, unfair advantage, consent, passing off and the personal liability of the company’s director.

The claim succeeded in part.

1. Origin function and average consumer. Use of BMW in a descriptive context, such as stating that the business was a BMW specialist, accurately conveyed expertise and did not affect the mark’s functions. The BMW word mark therefore was not infringed. By contrast, the Roundel displayed prominently on or inside a garage was likely to suggest authorisation by BMW, or at least cause the average consumer to wonder whether an economic link existed. That uncertainty adversely affected the Roundel’s origin function. The same reasoning applied to the M Logo.
2. Unfair advantage. The court applied the objective-effect approach described in Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch). The Roundel’s use conveyed authorisation and enhanced the business’s ability to trade. It consequently took unfair advantage of the Roundel’s repute. The BMW word mark did not convey authorisation and there was insufficient evidence that its use took unfair advantage of BMW’s repute or distinctive character.
3. Consent and statutory limitations. Under Directive 89/104/EEC, as explained in Zino Davidoff SA v A&G Imports Ltd (Joined Cases C-414 to 416/99) [2002] Ch. 109, consent must normally be express and any inference must be unequivocally demonstrated. BMW had given no consent. The defences under art 12(b) and (c) did not succeed.
4. Passing off and liability. TLL was liable for passing off in relation to the Roundel and M Logo. Mere uncertainty about whether an economic link existed would not have amounted to a misrepresentation. Mr Agyeton was jointly liable because he was TLL’s guiding mind and accepted that he and the company were effectively one and the same.
5. The Roundel was infringed under art 9(1)(a) and (c); the M Logo was infringed under art 9(1)(a) and (b); the BMW word mark was not infringed; and the pleaded passing-off claims concerning the Roundel and M Logo succeeded.