UK: Can You Repair My Car?

Last Updated: 22 June 2016
Article by Mark Owen

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.

Conclusion

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 [2016] EWHC 797

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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

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

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (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 www.mondaq.com

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 Mondaq.com’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.

Disclaimer

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.

Registration

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 unsubscribe@mondaq.com 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.

Cookies

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.

Links

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.

Mail-A-Friend

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.

Security

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 webmaster@mondaq.com.

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 EditorialAdvisor@mondaq.com.

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 enquiries@mondaq.com.

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