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Wednesday, 11 May 2011

"Beholden to no-one" -- a new defence to IP infringement claims?


Legitimate use -- or the wrong side of the line?
No stranger to the highways and byways of the internet, the IPKat strayed across this little item on BMW-DRIVER.NET. It's called "BMW Taking on Eddie at BMW care" and it reads like this:
"Anybody read this in the paper on Sunday? My dad rang and asked had I heard the name BMWcare. I just bought the day access to Sunday Times to download it [this proves that some people are prepared to pay for access to online material, but this is not the point of this post so please read on ...]

Quote:
BMW, which declared €834m profits for the second quarter of this year, has launched a High Court action against an Irish mechanic who specialises in repairing its cars.

The German manufacturer is seeking to gain control of Eddie Ronayne’s website, BMWcare.com, and to obtain a court order preventing him from “passing off” his business as being authorised.

Ronayne, who is expected to fight the case, denies BMW’s claims that he infringed its copyright [Copyright in a domain name? Or is this another instance of journalistic license to abuse IP concepts? Never mind. Read on!] or is passing himself off as an approved mechanic. “This matter is vital to my ongoing business surviving,” said Ronayne, who is based in Cloonfad, near the Roscommon border with Galway.

Ronayne has owned the website BMWcare.com since 2006 and registered BMWcare as a business name with the Company Registration Office that year. The one-page website says that he provides a “second opinion” and is “independent” and “beholden to no-one” [Merpel's a bit puzzled here. Does 'independent' and 'beholden to no-one' mean he's not married?].

The site claims to have saved some drivers “hundreds” in repair costs. Ronayne cites several endorsements from contributors on BMW-owner websites. Although Ronayne has not filed any accounts with the CRO under that name, it is understood he claims to make at most €25,000 a year from the business. ...

BMW said its case against Ronayne concerns alleged trademark infringement [whatever happened to the copyright and passing off?] because of his use of the BMW name and logo. “BMW and its dealers invest a great deal in training and equipment in order to assure highest quality and service standards. BMW also strives to ensure that the use of the brand is consistent,” said a spokeswoman.

Large companies have a mixed record in legal actions where they have tried to stop other businesses using their logos. In 1999, BMW lost a case when the European Court of Justice found the “honest” use of trade marks by third parties was necessary to preserve undistorted competition" [and here it is: Case C-63/97 BMW v Deenik].
The nub of the ruling in that case, says the IPKat, is that
"...[The infringement provisions] of First Directive 89/104 [now Directive 2008/95] do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create to the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings.".
Use of the word "BMW" was considered to be permitted on the facts of Deenik, which however dealt neither with logos nor with domain names.  In Ronayne's case it is difficult to comment with no facts other than those mentioned above. However it seems that, in principle, Ronayne can't be prevented from using "BMW" altogether if he is also indicating what he does to BMW cars for a living and is not conjuring up the impression that he and BMW are connected.  If that is the case, the responsible and non-misleading use of the same word as part of a domain name containing a word trade mark should be at least capable of being brought within the same rule.  However, use of the logo sounds like a bridge too far for the defence to cross, unless it can be used in a manner that clearly indicates the absence of a commercial connection between Ronayne and BMW.  Merpel chirps in, "what about displaying a logo together with the  words 'Broken BMW logos mended here'?"

Configure your own BMW here

2 comments:

Anonymous said...

Excellent post, but I wonder what the German BGH would say? Cf Birgit Clark´s post here at Sunday, May 08?

Philip Cooper said...

I'm surprised it's taken BMW since 2006 to do anything, but they clearly have a case when the use of their logo is so prominent and the BMW logo is the recognised badge of a franchised dealer.

In my opinion, the Deenik case was decided wrongly or translated badly - there's clearly a difference in my mind between "BMW Specialist" and "Specialist in BMW's".

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