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Wheely good result for BMW in the Patents Court

Date: 15 October 2020

 

The Patents Court has recently ruled to uphold BMW's claims of trade mark infringement, passing off and registered Community designs (RCDs) infringement.

 

The court ruled that the scope of the injunction restraining further infringement should be limited to the six specimen designs relied on by the well-known motor company. This was decided on the grounds that there was no evidence of infringement of the other designs.

 

Trade mark infringement in BMW wheel parts

 

The defendants were all car parts manufacturers selling wheel centre caps and other alloy wheel products. There was no evidence that any of the defendants had ever been an authorised BMW dealer, nor that any of them had ever sold any genuine BMW goods.

 

There was abundant undisputed evidence at trial of trade mark infringement and passing off. For example, over 1,600 infringing wheel centre caps and other badges (including those bearing BMW’s BMW and MINI trade marks) had been seized following a search of the defendants’ warehouse premises. Evidence also showed that the defendants had purchased replica alloy wheel products (including some with the BMW roundels on them) from a number of suppliers, including one called Euro Racing in China, and had also received replica BMW stickers from a company called Ark Nova.

 

The defendants’ retail premises had non-BMW wheels on display which bore the BMW roundel trade mark; wheels bearing that mark and BMW’s “M logo” trade mark were supplied via a test purchase; and the defendants had also sold similar goods via an eBay channel.

 

Registered design infringement of BMW wheels

 

BMW also claimed infringement of six registered designs. In each case the defendants’ wheels (shown below on the left) failed to produce a different overall impression on the informed user when compared to BMW’s designs (shown below on the right):

 

bmw_wheels_419

 

There remained the question of what the court would do about the balance of pleaded RCDs which were not selected for trial as specimens. Recorder Campbell said that he believed there were 63 such RCDs, of which there was specific evidence of infringement in relation to 26, and said that the court would hear further submissions from the parties on that issue.

 

Comment

 

This decision underlines that, although the court has the power to grant a wide injunction, whether it will exercise that discretion to make such an order depends on the facts of the individual case. As Recorder Campbell explained:

 

A consumer for some unlicensed music or films might well also be a consumer for other unlicensed music or films, particularly if they are all available for no extra payment by that consumer. In those circumstances a wide injunction against a supplier of unlicensed music or films may be appropriate. However a consumer of alloy wheels is more likely to have one, and only one, specific design in mind.

 

 

Case citation: Bayerische Motoren Werke v Premier Alloy Wheels

 

Our full article on this case will appear in the upcoming Journal of Intellectual Property Law and Practice.

 

Our Trade Marks team are experienced in filing and prosecuting trade marks in a wide variety of sectors. Follow the link for more information on our work: Trade Marks & Brand Protection 

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