BMW v Technosport: independent garage’s “TECHNOSPORT BMW” branding found infringing

What happened

BMW sued Technosport London Ltd, an independent garage that serviced BMW and MINI vehicles, and its director over various uses of BMW's trademarks. This included the Roundel logo, the M Logo and the word "BMW" used as part of the trading style "TECHNOSPORT BMW" on staff shirts, a van and a Twitter handle. The trial judge found infringement over the Roundel and M Logo uses, but not over "TECHNOSPORT BMW", reasoning that more evidence, possibly from actual consumers, was needed to show that average consumers would think the garage was an authorised BMW dealer. BMW appealed that part of the decision.

What did the court decide in Bayerische Motoren Werke Aktiengesellschaft v Technosport London?

The Court of Appeal held the trial judge had made an error of principle in demanding further evidence, including potentially consumer evidence, before concluding that putting a dealer's own name next to "BMW" created an impression of authorisation. Looking at each use in its full context, the court found the shirts, van and Twitter handle went beyond simply telling customers the garage specialised in BMW repairs. Each carried a real risk of giving a false impression of a commercial connection to BMW or of authorised dealer status, which was enough to satisfy the legal test for a likelihood of confusion under Article 9(1)(b) of the EU trademark regulation.

What we learned from this

• What I'd take from this is that how you present a manufacturer's name matters as much as whether you're allowed to mention it at all. Saying you're a "BMW specialist" is different from branding your shirts, van and social media as "TECHNOSPORT BMW".,Keep any reference to a manufacturer's brand clearly descriptive, something like "independent specialist in BMW repairs", rather than merging it into your own trading name.,Courts will look at the overall impression a sign creates in context. You don't necessarily need a consumer survey to show it misleads.,If you repair or sell branded goods, review your shirts, vehicles and social media handles, not just your paperwork, for how you use the brand's name.

The businesses involved

What others said about it

• The real question was whether calling itself a "BMW specialist" tipped over into implying an authorised dealership, says Osborne Clarke Marketing Law.Source: Marketinglaw, May 2016
• D Young & Co frames the case as a test of where legitimate descriptive use of a manufacturer's mark ends for independent repairers.Source: D Young & Co, September 2017
• William Fry calls the ruling another success for BMW in defending its trademarks against unauthorised garage use.Source: Williamfry, July 2017
• RPC stresses the decision sits in a line of cases separating purely informative use of a trademark from use that misleadingly suggests a commercial connection.Source: Rpclegal