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Use of third party trade marks by service providers: what are the limits?

To what extent can a specialist repair business use trade marks owned by the companies whose products they service, without breaching trade mark law?

This issue was recently considered by the Court of Appeal of England and Wales in Bayerische Motoren Werke Aktiengesellschaft v. Technosport London Limited and George Agyeton.

Technosport London Limited (“Technosport”) is an independent garage specialising in the service and repair of BMW cars. It is not affiliated with BMW, and never has been. BMW objected to Technosport’s use of the word mark “BMW” and the BMW “Roundel” device as infringing their two EU trade mark registrations for the name and Roundel device respectively. In particular, they said that the use made of both these marks risked the general public being deceived into thinking Technosport was an authorised BMW service provider.

Because of this risk of deception about the nature of Technosport’s relationship with BMW, BMW argued that Technosport was not entitled to rely on Article 12 of Council Regulation (EC) No 207/2009 on the European Union trade mark. Article 12 – “Limitation of the effects of an EU trade mark” provides that an EU trade mark:

“[S]hall not entitle the proprietor to prohibit a third party from using in the course of trade:
…;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts,
provided he uses them in accordance with honest practices in industrial or matters.

There are similar defences to the use of a UK trade mark for goods and services.

In his first instance decision, His Honour Judge Hacon, accepted that Technosport’s use of the Roundel infringed BMW’s rights.

However, he said that Technosport was not infringing the registered word mark “BMW” by using it as follows:

(i) in the combination “Technosport-BMW” on clothing and on a van; and
(ii) in a Twitter account operated under the handle @TechnosportBMW.”

He found these uses came within the statutory defence in Article 12 and “did no more than accurately convey the message that TLL was a garage specialising in the maintenance and repair of BMW cars.”

BMW appealed, successfully. The Court of Appeal found that the trial judge had misdirected himself, and that perhaps BMW had overcomplicated its own argument by putting too much stress on the differences between how authorised repairers used the trade marks, rather than the message members of the public would take from the Technosport usage.

Lord Justice Floyd, giving the key judgment, summarised the issues as follows:

“Use of the mark is necessary and legitimate in order to explain to the public what the business in question actually does. Thus, by way of example, BMW rightly took no objection to the use by TLL of the slogan “The BMW specialists” on the facia of their old premises, separated from the name identifying the business, namely Technosport. Equally, one cannot start from the proposition that the use of BMW in relation to a motor car repairing service can never be an infringement. … The distinction is between uses which convey the true message “my business provides a service which repairs BMWs and/or uses genuine BMW spare parts” and those which convey the false message “my repairing service is commercially connected with BMW”. Which of these messages is conveyed depends on a close consideration of the detail and context of the use. For convenience I call the former message “informative use” and the latter “misleading use”.”

The Court of Appeal went on to find that all the instances listed above came under the “misleading use” heading, and therefore infringed BMW’s rights.

Susan Hall, partner in Clarke Willmott’s Intellectual Property team, said, “This clearly shows the limits on the Article 12 defence. Anyone using a third party trade mark to describe the goods and services they are providing needs to be careful not to go beyond that use and, in particular, not to indicate a closer connection to the brand owner than is in fact the case. Of particular note in this case was that running a Twitter account incorporating the trade mark was seen as a misleading and infringing act.”