Trade Mark Law Update – the pitfalls of using someone else’s trade mark

Executive summary: if you need to refer to a third party trade mark as part of your promotional or marketing materials, make sure that such use is merely informative and not misleading.

In some commercial situations, it may be legitimate to use a third party’s registered trade mark in the course of trade. Take, for example, the car repair business. If you specialise in repairing BMWs, you will want to communicate this fact to your potential customer. By doing so, you are not going to be infringing a UK registered trade mark for BMW, as you would simply be engaging in “informative use” of a registered trade mark which is allowable. However, if such trade mark use was to become “misleading”, then you would be risking infringement.

A recent case from the Court of Appeal of England and Wales, provides some useful guidance on where the courts may draw the dividing line between “informative use” and “misleading use”.

In the case of BMW v Technosport London Ltd & Anor [2017] EWCA Civ 779, the Court of Appeal looked at instances where Technosport London Limited (“TLL”), a company dealing in the repair and maintenance of cars, mostly BMW motor cars and Minis, used BMW’s registered trade marks. The complained about usage was on:

1. i) Shirts – a shirt on the breast of which appeared the word TECHNOSPORT and immediately beneath it the letters BMW and a shirt on which the words TECHNOSPORT BMW appeared on a single line.
2. ii) The Twitter account use of the handle @TechnosportBMW and Tweets received from TLL would be seen as “Technosport@TechnosportBMW”.

iii) A Van which carried the words TECHNOSPORT – BMW across the top as shown:

The Judge focused on whether the above uses conveyed the true message that “my business provides a service which repairs BMWs and/or uses genuine BMW spare parts” or whether they conveyed the false message that “my repairing service is commercially connected with BMW“.

In registered trade mark cases such as these, the Judge needs to assess these questions through the eyes of the “average consumer”. The court makes its own assessment here as to the perception of the average consumer, aided often by evidence from actual consumers and informed by the overall context in which the trade marks are used.

Looking at the various usage of the BMW trade marks by TLL, the Judge noted that in various respects it went beyond that which was necessary merely to provide the information that it specialises in the repair of BMWs.

In this case, it was evident that TLL’s use of the BMW trade mark within the trading style and in close juxtaposition with the “Technosport” aspects would have been misleading as far as the average consumer was concerned. The Judge approved of the argument of BMW that if TLL simply wishes to convey the information that it specialises in the repair of BMWs, it would be easy for it to say that expressly, by the use for example of the phrase “BMW repair specialist”, in a manner which is visually distinct from the name Technosport.

In view of the above, TLL was held to have infringed BMW’s trade marks.