Ireland: IP Update – Trademark Infringement

Last Updated: 7 April 2014
Article by Gavin Woods, Rob Corbet and Olivia Mullooly
Most Read Contributor in Ireland, October 2018


A recent decision of the Irish High Court examined the use of the BMW word mark by a business which specialises in repairing BMW cars but is not associated with BMW. In a decision of Mr. Justice Ryan, it was held that the Defendant, Mr. Edward Ronayne who traded as "BMWCare" was engaged in trademark infringement and passing off. The Court held that Mr. Ronayne's use of "BMW" went beyond advertising his services, that he had sought to create an identity using the name "BMW" and had not done enough to avoid the inference of a commercial connection.

The Background

High Court proceedings were issued by BMW, the worldwide company with a well-recognised brand, holding a number of internationally recognised trade marks in December 2010. The Defendant was Edward Ronayne (trading as BMWCare) who operated a garage in the west of Ireland specialising in BMW repairs. Mr Ronayne used the name "BMWCare" in his email address and domain name. He also registered it as a business name and, for a time, had used the BMW roundel logo on his website.

The Issues

BMW claimed that this usage constituted infringement of its trade marks rights and the tort of passing off as Mr. Ronayne was passing off his business as being associated with BMW. BMW stated that it had no objection to Mr Ronayne referring to BMW in the course of his business as long as it was done in a legally permissible manner.

Mr Ronayne argued that he had deliberately attempted to disassociate himself from BMW by including on his website statements such as: "Independent advice and assessment" and "We are proud to be independent". He also claimed that his use of that name was legitimate under section 15(2) of the Trade Marks Act 1996 and the CJEU (previously ECJ) case law.

Sections 15(2)(b) and (c) of the Trade Marks Act 1996 provides that a registered trade mark is not infringed by the use of indications concerning, among other factors, the kind and intended purpose of a service; or by the use of the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts "provided that such use is in accordance with honest practices in industrial and commercial matters". BMW argued that Mr. Ronayne's actions in trading under the BMWcare name was in breach of section 14(3) of the Trade Marks Act as it was tarnishing its mark, given that BMW had no control over the standard of Mr. Roynayne's business. BMW made particular reference to stringent requirements to become a BMW authorised service agent, who are independent of BMW and who are not permitted to use the BMW logo on their websites.

Mr Ronayne relied on the Deenik case in which it was held that Mr. Deenik had an entitlement to call himself "BMW specialist" and a mark owner could not prohibit someone else from using it for the purpose of promoting their own business, unless it gives the impression of an affiliation or relationship between the parties. From this judgement Mr Ronayne understood that he could use that name as long as he made it clear that he was not associated with official BMW. He was also convinced that he achieved that by referring to his business as an "independent BMW specialist".

The Decision

In a judgment on 19 December 2013, Mr Justice Ryan established that use of BMW's trade mark constitutes infringement unless justified or excused. In order to establish whether use of the name by Mr Ronayne was in accordance with the honest practices in industrial and commercial matters the Judge considered the Directive and the relevant case law. He outlined that in the Deenik case, Mr Deenik was allowed to advertise that he was a BMW specialist as this was for the purpose of informing the public about the nature of his business.

In respect of the Porsche case, Mr Justice Ryan outlined that in this case Mr Van Den Berg went a bit further as he incorporated the permitted information into his business name ("Porsche Specialist Van Den Berg") and it was held by the Court that this could imply a connection between Mr Van Den Berg business and Porsche beyond the fact that he specialised in those cars. Taking the above into consideration, Mr Justice Ryan concluded that Mr Ronayne went even further as he was using the BMW name to create a business with the name. The name was not used to advertise the services but to create an identity and this was not in accordance with honest practices in industrial and commercial matters. He also outlined that BMWCare name asserts a commercial connection with BMW which could cause consumers confusion and that Mr Ronayne's website was "indicative of an association with BMW" and "suggestive of a commercial connection". Mr Justice Ryan also concluded that the disclaimers included on Mr Ronayne's website were "hopelessly inadequate" and the declaration of independence was not sufficient to avoid the inference of a commercial connection between the parties. Mr Justice Ryan held that Mr Ronanyne's actions amounted to an infringement of BMW's trade marks and passing off as they were "without due cause", took "unfair advantage of the distinctive character of the trade marks and of their reputation" and were also "detrimental to their distinctive character and/or reputation of the mark".

Previous case law from the CJEU found that a plaintiff must prove that the infringing use of the defendant adversely affects the function of the trade mark and that one of these functions was to act as a guarantee of origin. Mr. Justice Ryan found that Mr. Ronayne's use of the BMW mark was liable to affect the function of guaranteeing to consumers the origin of the services that BMW provides through its network of dealers and authorised repair agents.

Mr. Justice Ryan held that BMW was entitled to injunctions restraining Mr. Ronayne in the use of the name "BMWCare" in respect of his business and in particular, on his website. The issue of other reliefs and costs remains to be determined.

This article contains a general summary of developments and is not a complete or definitive statement of the law. Specific legal advice should be obtained where appropriate.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions