Servicing trade mark infringement (Brands & IP Newsnotes - issue 6)
13 October 2017
The use of a third party trademark to provide information or describe a service being offered does not necessarily constitute trademark infringement. Where the use of a trade mark goes beyond that and creates an impression in the average consumer that the particular service is authorised by the trade mark owner, this will constitute an infringement.
At first instance BMW successfully sued Technosport London Ltd (TLL) for trademark infringement of its roundel mark and passing off. However, BMW was unsuccessful in demonstrating that its “BMW” word mark was infringed through use on clothing, vehicle liveries and social media as “TECHNOSPORT BMW”. BMW’s case was that such use of its mark combined with the Defendant’s trading style would lead the average consumer to assume that TLL was an authorised BMW dealer, when in fact it was not. The court decided that the use of BMW with TLL’s trading style did not connote to the average consumer that TLL was authorised by or somehow linked to BMW. BMW appealed this decision.
The Court of Appeal decided in favour of BMW. The use of the sign “TECHNOSPORT BMW” on clothing, vehicle liveries and even as a Twitter handle, without any further explanation of the types of services being offered, means that there is a risk that that the average consumer would assume there is a link between TLL and BMW, beyond the mere fact that TLL services and repairs BMW cars. That was sufficient for BMW to demonstrate that its trademark was infringed.
Vehicle manufacturers will welcome this decision as providing a clear basis to distinguish authorised dealers or repairers from those businesses, whilst not authorised repairers, specialising in servicing particular makes of vehicles. Conversely, businesses who are providing specialist repairs or servicing, need to be careful in all of their marketing channels that they do not inadvertently stray into infringing territory. These businesses need to ensure that any use of a service mark is used with an explanation in the context of the service being offered.
A link to the judgment is here.