A recent case in the newly badged Intellectual Property Enterprise Court late last month has caught our eagle eye as it looks at use of a third party’s trade mark on websites – an issue that we have been asked to advise on fairly regularly.
Bayerische Motoren Werke AG v Shaun Coley (trading as BMW Mini Gearbox Centre) follows earlier unreported proceedings in which BMW succeeded in persuading the court that Coley was infringing its Community and United Kingdom BMW and MINI trade marks by using them in his business’s domain name, on his website.
Coley had traded under the names “BMW Mini Gearbox Centre” and “Mini One Cooper Gearbox”, and also operated a website with the URL www.minigearbox.co.uk. BMW initially obtained default judgment plus an injunction ordering Coley to stop including the use of BMW’s Mini wings logo. Coley did not dispute the fact that he had used the Mini wings logo and the word MINI in various ways, but argued that he was entitled to do so as he had used the relevant signs descriptively in order to indicate the origin of the goods in question. This is permitted under section 11 (2)(b) of the Trade Marks Act 1994 provided that the use is in accordance with honest commercial practices.
It appears that Judge Hacon thought that Coley’s use of the Mini wings as well as the name started to step over the line of mere designation of origin of the goods and strayed into the realms of taking unfair advantage of the mark. In practical terms, Judge Hacon noted, it would take very little effort for Coley to adjust the use of the sign BMW signs so as to make it clear that his primary message was that his business offered reconditioned gearboxes; if that were done, BMW could not object.
We have defended robust claims of trade mark infringement in very similar instances, where clients are using a well known mark simply in order to designate the origin of the goods. The key, it seems, is to be clear that you are not associated with the Brand owner and ensure that there is no confusion in the mind of the public that you might be.