Ireland: IP Update – Trademark Infringement

Last Updated: 7 April 2014
Article by Gavin Woods, Rob Corbet and Olivia Mullooly


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 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
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.