Bayerische Motoren Werke AG v Premier Alloy Wheels (UK) Ltd & Ors

Accessory liability for intellectual-property infringement requires more than trivial assistance to the primary tortfeasor, assistance pursuant to a common design that the act be committed, and an act which is tortious against the claimant. The accessory need not intend or know that the act is tortious. Mere facilitation or knowledge is insufficient.

A wide injunction may be granted where the evidence establishes a general threat to infringe a class of rights. The court has power to grant such relief, but its exercise depends on the facts. Without evidence of a general threat, relief should be confined to the rights actually infringed.

The claimant brought proceedings concerning the infringement of its trade marks, passing off, registered Community designs and, against the second defendant, breach of contract. The defendants operated businesses selling alloy wheels and related products.

Judgment had already been entered against the first and second defendants. The third defendant made no submissions. The live liability issues concerned whether the fourth and fifth defendants were personally liable for the third defendant’s infringements as accessories, and whether injunctions should extend beyond the six registered designs for which infringement was established.

1. Liability of the corporate defendants. The claimant succeeded against the first to third defendants in trade mark infringement, passing off and registered Community design infringement. The claimant also succeeded against the second defendant for breach of contract. The counterclaim challenging the validity of the registered designs was dismissed.
2. Accessory liability. Applying Fish & Fish Ltd v Sea Shepherd UK [2015] AC 1229, the court required: (i) assistance to the primary tortfeasor which was more than trivial; (ii) assistance pursuant to a common design that the act be committed; and (iii) a tort against the claimant. The accessory need not intend or know that the act was tortious. Mere facilitation or knowledge was insufficient.
3. The fourth defendant’s role as director, shareholder, bank signatory and participant in the business, together with his knowledge that replica BMW wheels bearing BMW marks were sold, amounted to more than trivial assistance pursuant to a common design. His liability ended when he left for China on 2 September 2017, because there was no evidence of further participation.
4. The fifth defendant’s extensive administrative work, including invoicing, payments, refunds, shipping, supply and payroll, materially enabled the infringing business to continue. His knowledge of the infringement and the absence of payment for his work did not prevent liability. He was jointly liable with the third defendant at all material times.
5. Registered designs. The relevant principles on infringement and designer freedom were taken from Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat), approved on appeal at [2012] EWCA Civ 1339, and Cantel Medical (UK) Ltd v Arc Medical Design Ltd [2018] EWHC 345 (Pat). The defendants’ products did not produce a different overall impression on the informed user. The validity challenge failed, although the protection of one design was relatively narrow.
6. Scope of injunction. The court accepted that it had power to grant a wide injunction under section 37 of the Senior Courts Act 1981, as illustrated by Microsoft v Electro-Wide [1997] FSR 580. That case involved evidence of a general threat to infringe a class of software rights. Here there was no evidence of a general threat to infringe the four additional designs, and the proposed inference from their alleged popularity was unsupported. Injunctive relief was therefore limited to the six designs on which infringement was established.
7. The fourth defendant was jointly liable with the third defendant up to 2 September 2017, but not thereafter. The fifth defendant was jointly liable at all material times.