Combination of marketing, design and trademark law provides protection

In a dispute between Bayerische Motoren Werke Aktiengesellschaft (BMW) and Danish company East Scandic A/S, the Maritime and Commercial Court of Copenhagen has ruled in favour of BMW (Case V-0108-0007, January 15 2010).
In May 2007 BMW became aware that East Scandic was marketing four different wheel rims which allegedly infringed BMW's design and trademark rights. The wheel rims were sold on East Scandic’s website under designations such as 'BMW M5', 'Wheels M6' and 'Replica M5'.
BMW requested that East Scandic stop marketing the rims and refrain from using BMW’s trademarks. East Scandic removed only some of the designations from its website and BMW filed suit.

Before the court, BMW argued that East Scandic was infringing its trademark rights by:
  • depicting the blue and white propellers of the BMW mark on its homepage; and
  • using designations such as 'BMW M5' and 'Wheels M6'.
In response, East Scandic argued that there were fundamental differences between the parties' products and that its wheel rims did not infringe BMW’s design rights. Further, East Scandic submitted that it was entitled to use the BMW mark (eg, as part of the designation 'BMW M5') in order to specify which model the rims fitted, as long as the letter and number combinations were different from those used by BMW as product names.
A crucial issue in this case was whether an informed consumer would confuse East Scandic’s rims with those of BMW, which are subject to registered design protection.

The court ruled that, based on an overall assessment, East Scandic's rims infringed BMW's registered design. The fact that one of BMW's rims was not registered as a design did not preclude the court from finding that infringement had occurred, as the design of the equivalent East Scandic rim was held to violate the Marketing Practices Act.
Further, the court found that East Scandic had infringed BMW's trademarks rights by depicting the BMW mark on its website and by using designations such as 'BMW M5' and 'Wheels M6'. These designations clearly exceeded the conditions of use of a trademark to indicate the intended purpose of accessories and spare parts under Article 6 of the EU Trademarks Directive (2008/95/EC).
The fact that East Scandic also sold rims in different sizes, as well as rims for other car brands, was considered to be an aggravating circumstance. Consequently, the court ordered that East Scandic pay Dkr250,000 in damages to BMW. Further, it ordered that East Scandic disclose the names of the producers and distributors of its products.
The case illustrates how a product may be protected by a combination of design law, trademark law and provisions on good marketing practices. Moreover, the decision may encourage trademark proprietors to seek the court's assistance in obtaining the names of manufacturers and distributors with a view to protecting their rights more effectively.
Lisbet Andersen, Bech-Bruun, Copenhagen

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