Use of BMW in a trading name (including as a social media handle) infringes BMW’s trade mark rights and is Passing Off

In a judgment handed down today by the Court of Appeal it has been made clear that Technosport London Limited and its sole director George Agyeton in their business as car repairers infringed BMW trade mark rights in the BMW word mark by using the trading name ‘Technosport BMW’ and this use also amounted to passing off. This trading name had been used as a Twitter handle, on clothing and on signage on a vehicle. In a judgment by Lord Justice Floyd the Court were very clear that use of a trade mark in a trading name like this conveys the impression of a commercial connection between a trader and the brand name used and, in this case this usage went far beyond informing customers that BMW cars and spares were used by Technosport in its business and such usage will not be permitted by the Courts.

The decision builds on BMW’s success at first instance (before HHJ Hacon sitting in the Intellectual Property Enterprise Court) in proving Technosport’s use of BMW logo and BMW M logo was infringing. However, the appeal decision finds that the use of the BMW word mark in a trading name will infringe without there being any need for accompanying logo usage.

BMW

The decision also confirms the Interflora case that for ordinary consumer products or services as in this case a judge can make his own assessment as to whether or not a use of a trade mark is confusing or has been passing off and a brand owner need not produce actual evidence of confusion in the marketplace or try to prove such confusion by way of surveys or witness statements of confused persons.

Steve Palmer of Palmer Biggs IP Solicitors says ‘We are delighted at this clarification of the law following the BMW v Deenik case that use of a brand name to indicate what a business does will not extend to inclusion of a brand in a trading name. This is of great help in the context of social media where often the only clue as to the identity of a business is its social media handle.’

The case team includes Gwilym Harbottle of Hogarth Chambers and Steve Palmer and Charles Lawless at Palmer Biggs IP Solicitors.

Further enquiries can be directed by email to info@pbip.com

Palmer Biggs IP, Solicitors

Link to Judgment

Judgment Date: 21 JUNE 2017

Use of BMW in a trading name (including as a social media handle) infringes BMW’s trade mark rights and is Passing Off

 

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