Bayerische Motoren Werke AG v BMW Telecommunications Ltd & Anor
Decision date: 12 February 2019
Neutral citation: [2019] EWHC 411 (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
This case concerned BMW plc's claim that a company incorporating the sign "BMW" (BMW Telecommunications Ltd) misrepresented an association with the claimant and infringed EU trade mark No. 91835. The court found that registration and use of the company name were likely to mislead users of the companies register, supporting passing‑off and infringement under EU trade mark provisions (art.9(2)(b) and (c)). The judge concluded the defendants had no real prospect of successfully defending those claims and granted summary judgment for the claimant. The first defendant later changed its name to BW Telecommunications Ltd, to which the claimant did not object.
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
The registration of a company name containing a well‑known, distinctive sign can, by itself, constitute a false representation to persons consulting the companies register and therefore give rise to passing‑off; the same logic of likely misleading impression for register users applies to likelihood of confusion/link under EU trade mark art.9(2)(b) and (c).
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 judge suggested (obiter) that the distinction between company names and domain names is not material when assessing whether registration causes a misleading impression, and that no specialist evidence is needed to determine how a person consulting the companies register would be impressed by such a registration.