Bayerische Motoren Werke Aktiengesellschaft v Technosport London Ltd & Anor

Under Article 9(1)(b) of the Trade Mark Regulation, an independent repairer may use a vehicle manufacturer’s mark informatively to explain the services it provides. The use infringes where the sign, viewed in its detail and context, conveys or risks conveying that the repairer is authorised by, affiliated with, or economically linked to the proprietor. Incorporating the mark into the business trading style may itself indicate such a connection; proof that every authorised dealer uses that style is unnecessary. The court assesses the likely impression on the average consumer and normally makes its own assessment without individual-consumer evidence. Actual confusion is not a prerequisite. The Court of Appeal left open whether purely informative use may nevertheless take unfair advantage of a mark with a reputation under Article 9(1)(c).

BMW sued Technosport London Ltd and George Agyeton for trade mark infringement and passing off arising from use of BMW’s BMW Mark, Roundel and M Logo in an independent repair business. HHJ Hacon found infringement concerning the Roundel and M Logo but dismissed the claims concerning the BMW Mark, including the Article 9(1)(c) claim: [2016] EWHC 797 (IPEC). Passing off stood or fell with infringement. BMW appealed the BMW Mark findings, principally under Article 9(1)(b), concerning the signs “Technosport BMW” on shirts, a van and a Twitter account. The central issue was whether those signs merely informed consumers that the business repaired BMW vehicles or suggested authorisation or an economic connection with BMW.

The appeal was allowed. Lord Justice Floyd gave the leading judgment and Lord Justice Patten agreed.

1. Applicable inquiry. Under Article 9(1)(b) of the Trade Mark Regulation, likelihood of confusion includes the risk that the average consumer believes that services come from the same or economically linked undertakings. The formulation in Bayerische Motorenwerke AG and another v Deenik [1999] ETMR 339 required qualification because it grouped provisions which raised separate Article 9 and Article 12 considerations. The proper distinction was between informative use and misleading use. Use necessary to explain that a business repairs BMW vehicles may be legitimate, but use which conveys a commercial connection or authorisation may infringe.
2. Error of principle below. The trial judge focused on the absence of evidence showing that authorised dealers universally used the relevant trading style and required further evidence, probably from actual consumers. That was wrong. In an ordinary consumer product case, the court normally makes its own assessment of the impression conveyed by the sign and all relevant circumstances. Individual-consumer evidence is not normally required, and actual confusion is not a prerequisite: Interflora I [2012] EWCA Civ 1501.
3. Context and trading style. The sign must not be stripped from its context, as explained in Specsavers International Healthcare Ltd and others v Asda Stores Ltd [2012] EWCA Civ 24. A mark incorporated into a trading style may identify the business and its services and naturally suggest a connection with the proprietor. It was unnecessary to prove that every authorised distributor used that style.
4. Application. “Technosport BMW” on the van, shirts and Twitter account was more than informative use. The signs carried a risk that consumers would understand the business to be authorised by, or commercially connected with, BMW. The signs therefore infringed the BMW Mark under Article 9(1)(b). Passing off required no separate consideration.
5. Article 9(1)(c). The alternative reputation-based claim was unnecessary after the Article 9(1)(b) finding. The court left open whether purely informative use could nevertheless take unfair advantage of a well-known mark.

The appeal was allowed against the findings concerning the BMW Mark.

• Court of Appeal (Civil Division) — The appeal was allowed in relation to the BMW Mark under Article 9(1)(b). The Article 9(1)(c) issue was left open.
• Intellectual Property Enterprise Court — HHJ Hacon dismissed the BMW Mark claims but found infringement concerning the Roundel and M Logo: [2016] EWHC 797 (IPEC).