|When it comes to cars,|
boys will be boys ...
|This is Coley's website's heading|
at the time of posting this article
|Mini sound-alike plus car, but no|
threat to BMW's trade marks here
Said Judge Hacon, taking the case by the scruff of the neck, all of the grounds invoked by BMW actually boiled down to a single point: would the average consumer, looking at the website, see the use of the sign MINI and think that the website was either an official BMW website or that of a business that presented itself as somehow linked to BMW?
In reality, held the court, it was not self-evident that the average consumer would be bound to take the view that the website was BMW's official website or a website that was otherwise licensed or approved of by BMW. The decision in the earlier trial might have been coloured by uses of BMW's trade marks other than those complained of here, and the use of signs complained of always had to be seen in context.
Here there was a genuine risk that the website www.minigearbox.co.uk would be perceived as either an official BMW website or as having been licensed or authorised: the fact that the website was accessed through its specific domain name might colour the view of the average consumer. It was unfortunate that "Mini One Cooper Gearbox" was plainly situated above the statement "Welcome to Independent Gearbox Centre" in smaller print: if that had been the other way around, so that the trading name was clearly "Independent Gearbox Centre" and it had stated below it that the website offered reconditioned gearboxes suitable for Mini One and Cooper cars, no doubt the use of the sign MINI would fall on the right side of the law. Unfortunately Coley had not done that: his use of MINI fell on the wrong side of trade mark and passing off law in relation to all of the uses of which BMW now complained -- including use in his domain name.
In practical terms, Judge Hacon noted, it would take very little effort for Coley to adjust the use of the sign MINI so as to make it clear that his primary message was that his business offered reconditioned gearboxes for Mini One and Cooper cars; if that were done, BMW could not object. He also recommended that Coley show BMW the revised website, which might lead to an agreement with BMW under which it could use the sign MINI without any further objection.
This Kat does like the style of the IP Enterprise Court. Apart from the fact that it's cheaper to litigate in than other courts in the jurisdiction, in this case it also offers practical suggestions to the losing defendant (who incidentally represented himself, so often a cause of further problems) as to how he might avoid further legal trouble and reach a modus vivendi with BMW -- a company that has not been timid about litigating to protect its rights [see eg Case C-63/97 BMW v Deenik, the case which incidentally establishes the parameters within which Coley can use the motor manufacturer's trade marks]. Merpel is still a little puzzled as to why BMW didn't go straight for the jugular and seek a fine or imprisonment for contempt of court, a step that might deter both Coley and others from treading on its trade marks and which might thereby boost consumer confidence that businesses bandying around the BMW marks and insignia do indeed have some connection with the manufacturer.
The Kats' favourite Coley here