To what extent can a business which provides ancillary services for another party's products or services, use the other party's brand when describing its own services? Although a common scenario, the lines between what is and is not permissible can be difficult to define. This was the task facing the IPEC in a case of trade mark infringement and passing off brought by BMW against a London car repair business (Technosport) and its owner (Mr Agyeton).
Background and claims
BMW owns several trade mark registrations in respect of car maintenance and repair services, including EUTMs for "BMW" and the well-known roundel device, and an International registration for an "M" logo. It licenses the marks to a number of approved repair providers. There are also a number of "independent" BMW repair firms which are not licensed by BMW, including Technosport which Mr Agyeton had been operating in London for a number of years.
Technosport specialised in BMW repairs and used genuine BMW parts and equipment. Mr Agyeton wore a shirt which bore the mark BMW and operated a Twitter account with the handle @TechnosportBMW. The roundel appeared on Technosport's facia board, on a banner in its reception area, on a van and on business cards. The M logo appeared on Technosport's website.
BMW claimed that each of these uses was a trade mark infringement, under all three heads (identical marks and signs, similar with a likelihood of confusion and taking unfair advantage). It also alleged passing off in that a substantial proportion of the public or trade would believe that Technosport was BMW approved. It conceded that some uses of its trade marks were lawful, and the Judge gave as an example of this that Technosport could advertise itself on its facia as "the BMW Specialist" as an accurate message that services it offered involved particular expertise in relation to BMW cars. This would not indicate anything inaccurate about the origin of any goods or services provided, nor affect the broader functions of the BMW mark such as of communication, investment and advertising. BMW's position was also complicated by the fact that it had supplied Technosport with articles for promoting the use of genuine BMW spare parts, which bore the roundel. But did these factors mean there was no infringement?
"Cause to wonder" = infringement?
The Court approached the infringement analysis for the first two heads through the eyes of a notional consumer who was reasonably well-informed, observant and circumspect. If the message conveyed by the use of a mark was sufficiently vague that the average consumer had "cause to wonder" whether there was an economic link between Technosport and BMW or not, that must amount to an unlawful and infringing use. In the absence of evidence, the Court found that the average consumer would come to believe that the roundel or M logo would only be displayed on or in premises of a repair business if it had been authorised by BMW "because that would have been the almost invariable experience of actual consumers". At the very least consumers would have wondered whether or not Technosport was licensed or not.
The Court was less convinced about the use of the "BMW" mark and felt that the evidence adduced by BMW to suggest that average consumers would have understood that the use on the T-Shirt and in the Twitter handle was unauthorised was too flimsy. This was an issue on which evidence from actual witnesses might have been helpful.
The Court also considered whether the third type of trade mark infringement had been made out, namely taking unfair advantage of the distinctive character or repute of the trade mark without due cause. It held that whether unfair advantage had been taken was to be assessed objectively, but noted that Mr. Agyeton had admitted that the use of the roundel gave Technosport "an enhanced ability to trade", and his subjective view reinforced the Court's objective view, that unfair advantage had been taken.
Other issues: consent, personal liability and passing off
The defendants argued that BMW had given consent as its representatives had visited the Technosport premises without complaint. However, the clear evidence from BMW's in-house lawyers was that licences could only be granted officially and not by conduct and that the business had been warned since 2006 about its use of the marks. Furthermore, BMW had informed Technosport of the issues it was unhappy about before the proceedings commenced. There was therefore no consent.
In cross-examination Mr. Agyeton conceded that he was the guiding mind at Techno Sport and that in effect he and it were one and the same. On that evidence it was conceded that he would be jointly liable with Techno Sport.
It was felt that no separate point arose on passing off and so it was not analysed at length.
This is a useful decision in showing the fact-based analysis the Court has to go through when considering the line between permitted and infringing use in respect of ancillary services. Perhaps most notable is the judge's formulation of the test for confusion, as whether the consumer has "cause to wonder" whether the use was authorised or not. If there is any cause to wonder, the use falls the wrong side of the line.
Case IPEC  EWHC 797
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