IP Update – Trademark Infringement

02-04-2014

Author: Gavin Woods, Rob Corbet, Olivia Mullooly



Bayerische Moteren Werke Aktiengesellschaft v Edward Ronayne (trading as BMWCare) [2013] IEHC 612

A recent decision of the Irish High Court examined the use of the BMW word mark by a business which specialises in repairing BMW cars but is not associated with BMW. In a decision of Mr. Justice Ryan, it was held that the Defendant, Mr. Edward Ronayne who traded as “BMWCare” was engaged in trademark infringement and passing off. The Court held that Mr. Ronayne’s use of “BMW” went beyond advertising his services, that he had sought to create an identity using the name “BMW” and had not done enough to avoid the inference of a commercial connection.

The Background

High Court proceedings were issued by BMW, the worldwide company with a well-recognised brand, holding a number of internationally recognised trade marks in December 2010. The Defendant was Edward Ronayne (trading as BMWCare) who operated a garage in the west of Ireland specialising in BMW repairs. Mr Ronayne used the name “BMWCare” in his email address and domain name. He also registered it as a business name and, for a time, had used the BMW roundel logo on his website.

The Issues

BMW claimed that this usage constituted infringement of its trade marks rights and the tort of passing off as Mr. Ronayne was passing off his business as being associated with BMW. BMW stated that it had no objection to Mr Ronayne referring to BMW in the course of his business as long as it was done in a legally permissible manner.

Mr Ronayne argued that he had deliberately attempted to disassociate himself from BMW by including on his website statements such as: “Independent advice and assessment” and “We are proud to be independent”. He also claimed that his use of that name was legitimate under section 15(2) of the Trade Marks Act 1996 and the CJEU (previously ECJ) case law.

Sections 15(2)(b) and (c) of the Trade Marks Act 1996 provides that a registered trade mark is not infringed by the use of indications concerning, among other factors, the kind and intended purpose of a service; or by the use of 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 that such use is in accordance with honest practices in industrial and commercial matters”. BMW argued that Mr. Ronayne’s actions in trading under the BMWcare name was in breach of section 14(3) of the Trade Marks Act as it was tarnishing its mark, given that BMW had no control over the standard of Mr. Roynayne’s business. BMW made particular reference to stringent requirements to become a BMW authorised service agent, who are independent of BMW and who are not permitted to use the BMW logo on their websites.

Mr Ronayne relied on the Deenik case in which it was held that Mr. Deenik had an entitlement to call himself “BMW specialist” and a mark owner could not prohibit someone else from using it for the purpose of promoting their own business, unless it gives the impression of an affiliation or relationship between the parties. From this judgement Mr Ronayne understood that he could use that name as long as he made it clear that he was not associated with official BMW. He was also convinced that he achieved that by referring to his business as an “independent BMW specialist”.

The Decision

In a judgment on 19 December 2013, Mr Justice Ryan established that use of BMW’s trade mark constitutes infringement unless justified or excused. In order to establish whether use of the name by Mr Ronayne was in accordance with the honest practices in industrial and commercial matters the Judge considered the Directive and the relevant case law. He outlined that in the Deenik case, Mr Deenik was allowed to advertise that he was a BMW specialist as this was for the purpose of informing the public about the nature of his business.

In respect of the Porsche case, Mr Justice Ryan outlined that in this case Mr Van Den Berg went a bit further as he incorporated the permitted information into his business name (“Porsche Specialist Van Den Berg”) and it was held by the Court that this could imply a connection between Mr Van Den Berg business and Porsche beyond the fact that he specialised in those cars. Taking the above into consideration, Mr Justice Ryan concluded that Mr Ronayne went even further as he was using the BMW name to create a business with the name. The name was not used to advertise the services but to create an identity and this was not in accordance with honest practices in industrial and commercial matters. He also outlined that BMWCare name asserts a commercial connection with BMW which could cause consumers confusion and that Mr Ronayne’s website was “indicative of an association with BMW” and “suggestive of a commercial connection”. Mr Justice Ryan also concluded that the disclaimers included on Mr Ronayne’s website were “hopelessly inadequate” and the declaration of independence was not sufficient to avoid the inference of a commercial connection between the parties. Mr Justice Ryan held that Mr Ronanyne’s actions amounted to an infringement of BMW’s trade marks and passing off as they were “without due cause”, took “unfair advantage of the distinctive character of the trade marks and of their reputation” and were also “detrimental to their distinctive character and/or reputation of the mark”.

Previous case law from the CJEU found that a plaintiff must prove that the infringing use of the defendant adversely affects the function of the trade mark and that one of these functions was to act as a guarantee of origin. Mr. Justice Ryan found that Mr. Ronayne’s use of the BMW mark was liable to affect the function of guaranteeing to consumers the origin of the services that BMW provides through its network of dealers and authorised repair agents.

Mr. Justice Ryan held that BMW was entitled to injunctions restraining Mr. Ronayne in the use of the name “BMWCare” in respect of his business and in particular, on his website. The issue of other reliefs and costs remains to be determined.

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