Is imitation the sincerest form of flattery? Not when it comes to BMW trade marks, says Frankfurt Regional Court

Cars and intellectual property have often been at the centre of disputes. A recent decision (not final) by the Regional Court of Frankfurt has sparked yet another flame on this matter.

Background

Finland-based car rim manufacturer Vannetukku.fi Oy (the defendant) operates within the automobile industry. It sells and delivers tyres and wheels across the Nordic and Baltic countries. Established in the 1960s, Vannetukku.fi was one of the first companies to launch its tyre and wheel online store in 2006.

BMW holds several registered intellectual property rights. These, amongst others, include a Community design registration for car rims and a number of EU trade mark (EUTMs) for its signs in Classes 2 – 45 of the Nice Classification.

BMW submitted that the defendant had infringed BMW’s EUTMs by using a similar sign to the BMW’s logo for sale of car rims. In particular, the defendant’s sign consisted of a circular shape, depicting a wheel in colours blue and white, while the thick outer layer of the circular sign was coloured in black. The name “BLAUKREUZ” was represented beneath the circular shape:

BMW also submitted that, by labelling the rims in question as belonging to its series “Mi4”, “Mi5”, and “Mi6”, the defendant had also infringed BMW’s EUTMs as relating to its M-series car rims, which are marketed by BWM under “M4”, “M5”, and “M6”. By naming its series “Mi 4 - 6”, the defendant increased its own sales by adapting well-known automotive marks systemically as models for its own brand series.

The decision

The court first established that BMW was the rightful owner of the actioned EUTMs. In light of the: (i) identity of goods, (ii) above-average distinctiveness of the BMW sign, and (iii) high degree of similarity in the figurative element, there was also a likelihood of confusion between the signs in question.

Furthermore, the BMW sign comprises white and blue areas with a typical black contouring. The overall impression created by that sign is decisively characterised by the figurative element, ie the white and blue sectors enclosed by a black circle. These coining features were completely adopted by the defendant. The defendant only omitted the letter sequence “BMW” and separated two of the four central fields and displaced them by 45 degrees. This did not suffice to exclude a likelihood of confusion in a broader sense.

In relation to the labelling of the rims, the court established that the defendants had infringed BMW’s rights in accordance with Article 9(2)(c) of Regulation 2017/1001 (EU Trade Mark Regulation (EUTMR)).

BMW’s trade marks “M4”, M5”, and “M6” are also well-known for vehicles. BMW used these trade marks for several years on a large scale. The defendant had therefore exploited the effect of their well-known reputation by naming its own series “Mi4”, “Mi5”, and “Mi6”. The court established that free riding had occurred for the purposes of Article 9(2)(c) of the EUTMR.

Some remarks

This is not the first time that BMW was forced to defend itself against third-party car manufacturers. This blog has previously reported on BMW’s victory in the UK over use of its trade mark to promote a spare parts business (see here). This case – in line with the Court of Appeal’s decision in the UK – appears to signal that imitation is not always the sincerest form of flattery, as it might be considered misleading use or – such as in this case – free riding tout court for the purposes of Article 9(2)(c) of the EUTMR.