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LOGO- NOT FOR GO

LOGO- NOT FOR GO

In the car industry, it is still a disputed question of intellectual property -Whether using a registered trade mark logo of a company by a third party in any service connected with that goods is legitimate or not. There is no specific answer given in law, up to which extent a spare parts business can use the logo of another car manufacturer company.

Recently the question arose again when the renowned German based luxury car manufacturer company Bayerische Motoren Werke Aktiengesellschaft, popularly known as BMW sued a London based car (specially BMW) repair company Technosport London Limited for using their trademarks and logo unauthorizedly.

BMW is the well-known manufacturer of motor vehicles and the registered trademark holder of

  • the letters BMW (“the BMW Mark”),
  • the BMW “roundel”
  • the M Logo”

which cover a variety of goods and services, including the maintenance and repair of cars motors and engines, and the parts and fitting of these goods.

Technosport London Limited (“TLL”) is the independent dealer who provides specialised service in the maintenance and repair of BMW cars, and used the BMW trade marks in the promotion of their business, including on their vans, in their premises, and on their website.

Last year BMW filed a case against Technosport for trademark infringement because they had been using three of its registered trademarks in their business activates. They were using the logos –

  • on a facia board on the exterior of its former business premises;
  • in the interior of its new business premises;
  • on business cards;
  • on its website;
  • on its official shirts, together with the word “Technosport”;
  • on Twitter, including in the Twitter handle @TechnosportBMW;
  • on the rear of its van together with the word “Technosport”.

In the first four cases technosports using the BMW mark exactly as it is, but in last 3 cases it is using BMW adjoining wither their own name as “Technosport BMW”

In another case of BMW ( C-63/97 Bayerische Motorenwerke AG and another v Deenik [1999] ETMR 339) the court gave an elaborative discussion about the  third party use of a trademarked sign of another company. The third-party use can also be lawful in some circumstances. The court divided the above third party use under two heads

  • INFORMATIVE USE— where the third party is creating a clear impression to the public that, they are connected with any kind of servicing (like repair, maintenance, or any specialized service) of the goods covered by that trademark and using the logo, with the consent of the trademark owner or there is no commercial relation between two companies.
  • MISLEADING USE: where the third party is using the trademark in such a way that it creates an impression over the public that the service of the third party is commercially connected with the trademark owner and there is any kind of special commercial relation between the two.

if a third party use the trademark in former manner, it won’t be considered as trademark infringement as they are clearly mentioning that exactly for which purpose they are using and they are not authorized or otherwise commercially connected with the company.

But in later scenario, as the third party creating a wrong impression about their service and using the goodwill of the trademark for their own financial gain without permission, this kind of use shall be considered as Trademark infringement.

While discussing all the question the court classified the use which are illegitimate.

  • USING THE LOGO ON SHIRT -MISLEADING (as nothing can be mentioned here to indicate the informative use,it is creating the impression of authorization by BMW.)
  • USING THE LOGO IN THE VAN: (the consumers can easily be misguided by seeing the logo, thinking that there is a commercial connection of BMW with the van, if nothing is mentioned to indicate informative use.)
  • THE TWITTER ACCOUNT: HIGH CHANCE OF MISLEADING (using the name or logo of the company in the twitter account will merely create an impression of authorization, if no information given to indicate informative use.)

The discussions of CJEU on this matter succeeded to clear the ambiguity, regarding spare parts and intellectual property,to some extent and gave us a clearer idea that in spare parts business what kind of use of trademark is legitimate and what is not.

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