There is a line to be drawn between informative use of a Trade Mark and misleading use of a Trade Mark. The latter being preventable under the law of Trade Mark infringement.
Informative use of a Mark can be a defence to Trade Mark infringement. Section 11, Trade Marks Act 1994, states as follows:
“A … 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.”
To this end, the recent case of BMW v Technosport London Limited [2017] EWCA Civ 779, has caught our attention. This case is an appeal from the IP Enterprise Court, in England and Wales, centering on the automotive repair and spare parts industry. Technosport is an automobile maintenance and repair company, specialising in BMW vehicles. Inter alia, Technosport included the BMW Trade Mark within their company name “Technosport BMW” on the back of a van, within a Twitter® handle and on official clothing.
The Court of Appeal had to decide upon whether these uses were:
- Informative, stating that the business provides a service which repairs and maintains BMW vehicles.
- Or Misleading, implying a commercial connection between the services and the Trade Mark owner.
In the judgement, it was noted that, whilst it cannot be assumed that using the BMW Trade Mark alongside or next to a trading name, such as Technosport, would lead a consumer to conclude that the business was authorised by BMW, in the case in point, since there was no separation of the BMW Trade Mark from the Technosport business name, this usage conveyed the impression of authorisation and was not informative.
Here at Albright IP, we are always keeping a careful watch out for case law developments and are well placed to advise our clients how best to secure, police and enforce their brand protection.