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England and Wales Court of Appeal (Civil Division) Decisions
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Cite as:  EWCA Civ 779
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ON APPEAL FROM THE HIGH COURT OF JUSTICE
INTELLECTUAL PROPERTY ENTERPRISE COURT
Strand, London, WC2A 2LL
B e f o r e :
LORD JUSTICE FLOYD
| BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT
(a company incorporated under the laws of Germany)
|- and -
|(1)TECHNOSPORT LONDON LIMITED
Charlotte Scott (instructed by Patron Law) for the Respondents
Hearing date: June 8 2017
Crown Copyright ©
Lord Justice Floyd:
(1) Community Trade Mark no. 000091835 in the form of the letters BMW ("the BMW Mark"), registered in respect of, among other things, the following services in Class 37: "maintenance and repair of cars, motors, engines and parts of these goods; cleaning of automobiles; installation services"."
(2) Community Trade Mark no. 000091884 ("the Roundel"), a device mark in the following form:
The Roundel is registered in respect of, among other things, services in Class 37: "maintenance and repair of cars, motors and engines and parts of these goods; cleaning of automobiles; installation services".
(3) International registration no. 1000463 ("the M Logo"), designating the European Union, a device mark in the following form:
The M Logo is registered in respect of, among other things, the following services in Class 37: "Repair and maintenance of motor vehicles and parts thereof and of engines for motor vehicles and parts thereof; tuning of motor vehicles and engines."
i) Shirts. In 2013 Mr Agyeton was photographed at the premises wearing a shirt on the breast of which appeared the word TECHNOSPORT and immediately beneath it the letters BMW. On a separate occasion in 2015 Mr Agyeton was photographed wearing a shirt on which the words TECHNOSPORT BMW appeared on a single line.
ii) The Twitter account. TLL owns a Twitter account with the user name or "handle" "@TechnosportBMW". TLL's Twitter page has a panel which has Technosport@TechnosportBMW prominently displayed. Beneath this address it is explained that Technosport is an independent BMW and MINI specialist in North West London. In order to "Tweet" to Technosport, a Twitter user would use the Twitter handle "@TechnosportBMW", and Tweets received from TLL would be seen as "Technosport@TechnosportBMW".
iii) The Van. TLL owned a van used for short trips around the area where its premises were located. The rear of the van carries the words TECHNOSPORT – BMW across the top as shown below:
I will refer to TLL's signs listed above as "the Technosport BMW signs". It is fair to point out that the allegation of infringement by use of the BMW Mark on the van was not separately pleaded by BMW, although it did plead that the use of the Roundel on the back of the van was an infringement. The judge did not deal separately with the use of the BMW Mark on the back of the van, but TLL waived any objection to BMW's reliance on it in this appeal, as it had been adequately investigated at the trial.
"BMW's argument in relation to the BMW Mark was more subtle and to my mind more flimsy. It was based on the assertion that while the average consumer would not believe that "BMW" conveys any implication of authorised use in general, it does when immediately attached to a dealer's name. It also conveys that implication where used in a manner which, according to the strictures contained in the contracts with authorised dealers, is not permitted use – such as the manner of representation on Mr Agyeton's shirt. In my view, the burden of establishing that the average consumer's perception of BMW signs embraced such subtleties would require more evidence than BMW produced. It would probably need evidence from actual consumers. I find that TLL's use of its BMW signs did not convey to the average consumer any implication of TLL being an authorised dealer. "
"1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and the identity or similarity of the goods or services covered by the Community trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) any sign which is identical with, or similar to, the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the Community trade mark.
2. The following, inter alia, may be prohibited under paragraph 1:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
(c) importing or exporting the goods under that sign;
(d) using the sign on business papers and in advertising."
"A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(c) 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 he uses them in accordance with honest practices in industrial or commercial matters."
"In the light of the foregoing, the answer to be given to the fourth and fifth questions must be that Articles 5 to 7 of the directive do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings."
"In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must consider the matter from the perspective of the average consumer of the goods or services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be considered stripped of its context."
Lord Justice Patten: