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Market Court rules on use of BMW, MINI and Rolls Royce trademarks

07.12.2016

In a recent case from the Market Court (MAO:641/16), the plaintiffs Bayerische Motoren Werke Aktiengesellschaft and Rolls-Royce Motor Cars Limited sued a person, whose company “Panama” was engaged in repairing cars, for trademark infringement. Bayerische Motoren Werke Aktiengesellschaft owns the trademarks “BMW” and “MINI” and Rolls-Royce Motor Cars Limited owns the trademark “Rolls Royce”. Panama referred to the trademarks on its website to market its services.

According to national and EU trademark law, trademark owners may prohibit third parties from using marks confusingly similar to their trademarks. According to settled case-law, there is usually a likelihood of confusion if there is a risk that the public will believe that the goods or services covered by the marks in question come from the same undertaking. However, it should be noted that a trademark owner cannot prevent another party from using the trademark owner’s trademark, if the other party is, for example, merely declaring that it repairs the trademark owner’s goods or is an expert on such goods. Having said that, the other party cannot use the trademark owner’s trademark in a way that creates an illusion that there is a business, dealer or other close relationship between the trademark owner and the other party.

In this case, the defendant’s business was to repair cars, for example BMWs, and the defendant displayed the plaintiffs’ logos on its website. The Market Court found that such use of logos may create an illusion that there is a business or dealer relationship between the two parties, and the defendant is thus infringing the plaintiffs’ trademark rights.

The judgement is in line with EU case law. Although it is sometimes inevitable to refer to protected trademarks to market one’s services or goods, it is important to think carefully about how such use might be perceived by others. In most cases, the use of logos and combination marks (text and picture) is not allowed. If the defendant in the case at hand would have referred to the plaintiffs’ trademarks as word marks in a context, that would have been more neutral and the outcome might have been different.

At the time of writing this article, the judgement was not final.


For further information, please contact:
Lotta Uusitalo

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