Bayerische Motoren Werke AG v Technosport London Ltd & Anor
Decision date: 13 April 2016
Neutral citation: [2016] EWHC 797 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
BMW sued Technosport London Ltd (TLL) and its director Mr Agyeton for trade mark infringement and passing off arising from TLL's use of the BMW word mark, the BMW Roundel, and the BMW M logo in relation to garage/repair services. The court found infringement of the Roundel and the M Logo and established passing off for those marks, but found no infringement of the BMW word mark; there was no valid consent by BMW and Mr Agyeton was held jointly liable with TLL.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: medium
Use of a well-known device mark prominently displayed on garage premises or in ways perceptible to the average consumer can convey authorised-dealer status and thus infringe the proprietor’s registered service marks (Art 9(1)(a)) and take unfair advantage of the mark’s reputation (Art 9(1)(c)). Website use may infringe under Art 9(1)(a) or (b) depending on whether the sign functions as a badge of origin for services or otherwise has a commercial function linked to the proprietor’s services. Consent to use a trade mark will not be inferred from limited or equivocal conduct; absence of express consent and evidence of objection undermine any implied consent defence.
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The notes record observations distinguishing use of marks on spare-part packaging or promotional items (which more readily indicate genuine parts) from prominent display on premises (which more readily suggests authorised status). The court also noted that the objective effect of a sign’s use is decisive for unfair advantage (user’s subjective intention is irrelevant though may be evidence), and that mere consumer doubt about a link might not suffice for passing off.