Resellers need to tread a careful line when using a brand owner’s marks. Use by an independent garage of BMW’s marks crossed the line between informative use (which is permitted) and misleading use (which is not).
When can you use a brand owner’s mark?
A trade mark owner cannot stop resellers from using its marks in a purely descriptive manner to indicate:
- the character of goods or services (e.g. the kind, quality, quantity, intended purpose, value, geographical origin, time of production or rendering) or
- the intended purpose of a product or service.
What had the garage done?
BMW has various registered marks including a word mark “BMW”, its “roundel” and “M logo”.
Technosport specialised in the repair and maintenance of BMW cars and used BMW manufactured spare parts, but was not an authorised dealer and had no formal connection with BMW.
Technosport used the BMW roundel and M logo in various ways. The court concluded that the average consumer had come to believe that the roundel and M logo would only be displayed in relation to businesses which were authorised by BMW; use of the roundel and M Logo infringed.
Technosport also used the word mark “BMW” with its trading name “Technosport”:
- on shirts featuring the words “Technosport BMW”
- as its Twitter account handle “@TechnosportBMW”
- on a van featuring the words “Technosport – BMW”
Technosport argued such use did no more than convey the message that it specialised in BMW cars. The court disagreed.
Informative or misleading use?
The key distinction lies between:
- informative use: i.e. “my business provides a service which repairs BMWs and/or uses genuine BMW spare parts” – permitted
- misleading use: i.e. “my repairing service is commercially connected with BMW” – not permitted.
The key to deciphering that distinction lies in understanding what message is conveyed to the average consumer:
- a reseller can use a brand owner’s marks as a description of what it does, so consumers understand it carries out the repair and maintenance of the brand owner’s goods (e.g. BMW did not object to use of the slogan “The BMW Specialists”)
- it cannot use a mark in a way which may create the impression there is a commercial connection between two separate businesses (e.g. purely as a trading style).
Context is important: use of “Technosport BMW” as a trading style, without any further context to clarify that it was only a BMW repair specialist, took it outside the scope of informative use.
The distinction between informative and misleading use is of wider application than to the spare parts industry. Resellers should take steps to ensure that the way they use a brand owner’s marks informs consumers about what they do and should avoid merely creating a trading style which identifies its business too closely with that of the brand owner.