BMW obtains injunction against use of 'BMWCare' by independent mechanic

In Bayerische Motoren Werke Aktiengesellschaft v Ronayne, Trading as BMWCare (2010 No 11125P, December 19 2013), the High Court has issued an injunction restraining the defendant from using the name BMWCare.

The plaintiff, Bayerische Motoren Werke Aktiengesellschaft, brought proceedings in the High Court against the defendant for infringement of its trademarks and passing off, as the defendant (an independent mechanic) had been carrying on a business and operating websites since 2006 under the name BMWCare. The defendant had also been using the plaintiff’s BMW roundel mark in the course of his business, but had ceased use of such mark shortly before the hearing and no longer maintained he was entitled to use it.

In his defence and counterclaim, the defendant alleged honest commercial practices under Section 15(2) of the Irish Trademarks Act 1996 and acquiescence by the plaintiff. He also counterclaimed that the plaintiff’s Community trademark (CTM) ORIGINAL BMW CARE PRODUCTS NATURAL CARE was descriptive and/or devoid of distinctive character.

In relation to the defence of acquiescence, Mr Justice Ryan held that:

“the fact that the defendant’s business name was included on a mailing list marketing BMW goods does not constitute acquiescence… It is irrational and wholly unjustified to fix the proprietor of a trademark with unintended and unknown legal consequences of knowledge and approval of every communication that may emanate from its own or associated business for any number of purposes.”

Mr Justice Ryan also rejected the defendant’s claim that the plaintiff’s CTM ORIGINAL BMW CARE PRODUCTS NATURAL CARE was descriptive and/or devoid of distinctive character. He agreed with the plaintiff that:

“the name BMW in the string takes it out of the descriptive category and makes it capable of distinguishing the goods and that it fulfils the criteria for registration... the fact is that, once BMW is introduced into the string of words, it transforms it into a registrable brand”.

In determining whether the defendant’s use of the plaintiff’s trademarks was legitimate under Section 15(2), Mr Justice Ryan considered whether the use of the plaintiff’s trademarks “is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts” and whether “such use is in accordance with honest practices in industrial and commercial matters”.

Mr Justice Ryan considered three cases which had been referred to in the arguments and submissions of the parties which he considered of immediate interest and relevance to this issue - namely, BMW v Deenik (Deenik) (C-63/97), Porsche v Van Den Berg (Porsche) (Hague Appeal Court, January 15 2013) and Toyota v Tabari (US Court of Appeals for the Ninth Circuit, July 8 2010). The defendant had alleged during the course of his evidence that he had studied the Deenik case before commencing use of the BMW marks and, in his view, that judgment of the European Court of Justice (ECJ) authorised his use of the marks.

In summarising the position in Deenik, Mr Justice Ryan held that:

“Mr Deenik wanted to advertise the information that he was a BMW specialist and the ECJ said he could, despite BMW’s objections. It was necessary use of the trademark for the purpose of telling the public the nature of his business.”

However, Mr Justice Ryan said that in Porsche:

“Mr Van Den Berg went a step further. He incorporated the permitted information into his business name but the Hague Appeal Court held that that was a step too far. It was not necessary information for the business and it was not honest business practice. Using the name implied that there was a connection between Mr Van Den Berg’s business and Porsche over and above the fact that he was specialised in those cars”.

Mr Justice Ryan held that the defendant in this case had gone even further than the defendant in the Porsche case as the “defendant has adopted a name that attaches to the BMW mark and name a word in common use and of general meaning”, namely the word 'care'. Mr Justice Ryan noted that whereas, in the Porsche case, the general public would have known 'porschespecialistvandenberg' was Mr Van Den Berg’s business, that was not the case with the defendant’s business name BMWCare.

He noted that the reason for the defendant’s adoption of this general business name was because (as admitted by the defendant in evidence) it was his business plan to establish a business which would operate as a franchise.

In relation to the defendant’s purported disclaimers (“independent advice and assessment”, “we are proud to be independent” and “beholden to no one”), Mr Justice Ryan held that they were:

“hopelessly inadequate, first, because they do not actually disclaim a connection; secondly, because they are complicated and obscure; thirdly, they are not prominent; and lastly, they are swimming against a tide of stylistic presentation indicating the very opposite. The declaration of independence is quite insufficient to disturb the impression of commercial connection.”

Mr Justice Ryan noted that the use of the name BMWCare asserts a commercial connection with BMW which is misleading to consumers and undermines BMW’s marketing through its unauthorised network. He held that even if the statements on the defendant’s websites were disclaimers (which he said they were not), the damage has already been done by the time consumers got to the website. He said that the metatags on the defendant’s site reinforced this impression.

In conclusion, Mr Justice Ryan held that the defendant’s activities were not authorised by any judgments of the ECJ. He held that the defendant:

“was not a man looking for a name for his business but making a business out of a name. He was not advertising services but creating an identity... the distinguishing feature of [the defendant]'s brand is the plaintiff’s trademarked name”. 

The plaintiff was granted injunctions restraining the defendant’s activities with other reliefs to be addressed at a later date.

Colette Brady, DFMG Solicitors, Dublin

DFMG Solicitors acted for the plaintiff in this case