BMW succeeding in driving out unauthorized use

South Africa

The case of Bayerische Motoren Werke AG v Commercial Auto Glass (Pty) Ltd is Bayerische Motoren Werke AG's (BMW) fourth successful High Court case in the recent past. In the case at hand, the High Court of South Africa (Transvaal Provincial Division) granted interdicts against a retailer of "replacement" components to fit BMW vehicles (Case 5889/2005, March 15 2006).

The respondent, Commercial Auto Glass (Pty) Limited (CAG), is a retailer of replacement windscreens for a wide variety of motor cars. It advertised those to fit BMW cars under a heading "Windscreens" using the trademarks of BMW in various contexts, including: "BMW E36 3-SERIES".

One of its replacement windscreens bore a label "BM-E36C" and a written quotation from it referred to a "BMW E36 Front Screen".

In granting the interdicts, with costs, the High Court held as follows:

  • The unregistered trademarks E30, E36 and E46, which are BMW vehicle model designations, were "well known" in terms of Section 35 of the Trademarks Act (which gives effect to Article 6bis of the Paris Convention for the Protection of Industrial Property);

  • CAG's conduct, prima facie, infringed the registered trademarks BMW, BM and 3-SERIES in terms of Sections 34(1)(a) and/or 34(1)(b) of the act, and the unregistered trademarks E30, E36 and E46 in terms of Section 35;

  • This conduct also amounted to passing off under the common law;

  • CAG's use of the trademarks did not fall within the defence provided by Section 34(2)(c) of the act, as its use was not "bona fide use … reasonable to indicate the intended purpose of the goods … consistent with fair practice";

  • To gain the benefit of the Section 34(2)(c) exclusion, and for the use concerned to be bona fide, a party must make it unequivocally clear that its goods are not connected in the course of trade with the trademark proprietor. In this regard, the court quoted with approval and followed an earlier judgment of the High Court in Bayerische Motoren Werke AG v Autostyle Retail (Case 5887/2005, November 30 2005);

  • As the use complained of was likely to cause confusion, it could also not be consistent with fair practice; and

  • CAG's constitutional right to freedom of expression under Section 16(1) of South Africa's Constitution did not allow it to use BMW's trademarks in this manner.

With reference to freedom of expression, the judge stated:

"If the Section 16 fundamental right protecting freedom of expression can be employed to attack the protection offered in terms of Section 34(1)(a) and (b) to the holders of valid trademarks, then, in my view, the very essence of trademark law, going back more than a century, may be under threat and may have to be reconsidered altogether. In my view such a result could not have been contemplated by the legislature."

Application for leave to appeal against this judgment was made on April 5 2006.

Chris Job, Adams & Adams, Pretoria

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