Wednesday 27th April 2016
A recent case has demonstrated how the use and misuse of brands and trademarks can cause difficulties for businesses and confusion for consumers. Brands should make sure that no-one is trying to take advantage of their logo to secure extra custom by keeping a close eye on misuse of its trademarks.
In the case of BMW v Technosport London Ltd , the defendant was an independent garage in London specialising in BMW cars, which branded business cards, employee clothing and its premises with the signature BMW logo and the BMW word mark. ‘BMW’ was also part of the garage’s Twitter handle. BMW brought claims for passing off and trademark infringement, on the basis that the average customer would see BMW’s logo and believe that the garage was an authorised dealer, and as such, the garage was taking advantage of BMW’s reputation.
The Court held that the average consumer would see the logo on the garage shop front and assume it was an authorised BMW dealer. This was different to branded promotional items which also said ‘genuine BMW parts’ as these will simply indicate that the spare parts come from BMW. Additionally, use of the BMW word mark on clothing and as a Twitter handle was not sufficient to cause the average consumer to believe there was a business relationship between the garage and BMW.
Independent garages can therefore associate themselves with a brand when promoting that brand’s parts, but not use logos to mislead customers into thinking that they are authorised by the brand in order to get extra custom.
If you have any questions about trademark use (or misuse), please contact Stephen McVey on 0113 227 0245 or at firstname.lastname@example.org or Catherine Woodward on 0113 227 0366 or at email@example.com.