German court asserts that Chinese manufacturer violated BMW’s trademark rights

Germany
  • District Court of Hamburg finds that Ninebot’s MINI/Mini/mini electric scooter series violated BMW’s trademark rights
  • Chinese manufacturer Ninebot released promotional video containing images of BMW’s famous MINI cars and logo
  • The court accepted that Ninebot had taken unfair advantage of BMW’s trademark and logo

The District Court of Hamburg has issued its decision in a case involving German car giant BMW and KSR Group GmbH – the European distributor of scooters manufactured by Ninebot (Tianjin) Tech Co Ltd.

Background

 Ninebot, which acquired US scooter company Segway in 2015, allegedly produced a promotional video featuring German car manufacturer BMW’s iconic MINI cars and trademarks next to its own electronic scooter, the Ninebot Mini Pro. KSR Group GmbH also offered a Mini Street, miniLITE and ninebot one electronic scooter.

In the video, a young man exits a futuristic building on his Ninebot Mini Pro electronic scooter which he steers with his knees. He stops in a car park where only MINI cars are parked. The camera zooms in when he touches the famous MINI logo to open the trunk of the car to store his electronic scooter.

The reputed German car manufacturer faced KSR Group GmbH in court and argued that the use of the sign MINI, mini, Mini and/or one for Ninebot’s electronic scooters and in the promotional video violated its trademark rights. The signs identify the product and serve as an indication of origin. Ninebot purposely chose to feature MINI cars and the MINI logo in its video to benefit from the outstanding reputation of BMW’s trademarks.

Decision

The District Court of Hamburg agreed that Ninebot used the terms MINI, Mini, mini and/or one as a trademark and in a non-descriptive manner. In comparison to other electronic scooters on the market, Ninebot’s Mini scooters are not small. A device with only one wheel (ninebot one) may be referred to as a unicycle, one wheel, monowheel or solowheel but not simply by the term ‘one’. The relevant public is used to the combination of the manufacturer’s trademark (Ninebot) and the (secondary) trademark that identified the product (Mini Pro, Mini Street, Mini Lite and/or one). Further, KSR Group GmbH took unfair advantage of the reputation of BMW’s famous MINI-wings logo when it featured the logo in its promotional video with a Ninebot Mini Pro slogan embedded in the top left corner of the video. The decision against KSR Group GmbH is not yet final.

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