Bayerische Motoren Werke AG v BMW Telecommunications Ltd & Anor

The registration of a company name containing a distinctive and well-known mark may itself constitute a misrepresentation for passing-off. A descriptive addition, such as a term identifying the company’s business, will not necessarily prevent confusion among persons consulting the companies register. The same reasoning may establish a likelihood of confusion or a link for trade mark infringement. Where the issue turns on the impression conveyed by the registered name, specialist evidence is not necessarily required. Summary judgment is appropriate where the defendant has no real prospect of showing that no substantial proportion of the relevant public would infer an association with the mark owner.

The claimant, the owner of the BMW mark and goodwill, brought claims for passing-off and infringement of a European Union trade mark against a company originally registered as BMW Telecommunications Limited and its managing director. The company name was changed to BW Telecommunications Limited before the hearing, but the claimant sought summary judgment and an injunction based on the earlier registration and the risk of future use of BMW.

The defendants argued that the company had been used only to invoice a consultancy customer, that the addition of “Telecommunications” distinguished it from the claimant, and that there was no evidence of actual confusion or a link. The central issues were whether registration alone could constitute passing-off and whether the same reasoning applied to the pleaded trade mark infringements.

1. Summary judgment test. The court had to decide whether the defence had no real prospect of success. The relevant question was whether the defendants could establish at trial that no substantial proportion of people consulting the companies register would believe that the company was associated with the claimant.
2. Passing-off. Applying the reasoning in British Telecommunications Plc v One in a Million [1999] 1 WLR 903, registration of a company name containing a distinctive name may itself make a false representation of association with the owner of the goodwill. The distinction between domain-name registration and company-name registration was immaterial. The word “Telecommunications” was descriptive and did not prevent the BMW element from conveying the relevant association.
3. The fact that the company had been used only to invoice one customer did not answer the wider question. The absence of confusion among that customer’s officers or employees did not address the reaction of persons consulting the public register. No specialist evidence was required because the trial judge, and therefore the summary judgment judge, could assess the impression conveyed by the registered name.
4. Trade mark infringement. The same reasoning applied to the likelihood of confusion under article 9(2)(b) and the likelihood of the requirements of article 9(2)(c) being met. The court also noted the express treatment of use as part of a company name in article 9(3)(d) of the 2017 Regulation. Summary judgment was therefore granted on both the passing-off and trade mark claims.