Motor mark infringement

Preventing traders of second hand, reconditioned products from misusing trade marks

This case shows how brand owners can prevent third parties dealing with second hand, reconditioned products from misusing their trade marks. 

Having successfully obtained default judgment and an injunction to prevent the operator of a garage and car parts business from using specific marks, the Intellectual Property Enterprise Court has made declarations that Shaun Coley t/a BMW Mini Gearbox Centre (“BMGC”) has infringed BMW’s “MINI” and “BMW” trade marks through its continued use of the marks in its website’s domain name and on the website itself.

BMW is a household name and the BMW and MINI trade marks carry a huge amount of goodwill. BMW argued that BMGC had used that goodwill to promote the sale of its cars and parts, taking unfair advantage of the MINI mark, to the detriment of the mark’s distinctive character and reputation.

In addition to trading under the name BMW Mini Gearbox Centre, BMGC also operated under the name Mini One Cooper Gearbox and owned the domain name BMW initially brought a claim for community and UK registered trade mark infringement and passing off. This resulted in an order for an injunction to prevent such use of the marks, which BMGC, unsuccessfully sought to have set aside.

BMW subsequently sought a declaration of infringement of its marks instead of committal proceedings and it was considered whether the use of the MINI mark would lead the average consumer to believe that the website was either an official website of, or affiliated with, BMW and similarly, in relation to the claim for passing off, whether a substantial proportion of the public would perceive that BMGC was BMW’s business or licensed or approved by BMW. In these particular circumstances, namely, where the “Mini One Cooper Gearbox” words were placed in large print above the “Welcome to Independent Gearbox Centre” which was in smaller print, it was held that the average consumer would perceive the website to be BMW’s official website or approved or licenced by BMW. 

Points to note:

  • This is a reminder to brand owners that they can prevent unauthorised use of their trade marks by retailers of second hand, reconditioned, compatible or spare parts.
  • Brand owners should ensure that such retailers make it clear that they are not in any way an authorised distributor of branded parts by stating in any advertisements or marketing materials that they are an “independent” retailer. This should be the primary message and should stand out in a large bold font.
  • If parts are reconditioned or second hand then it should expressly say so.
  • It should be made clear that the parts are suitable or compatible with the branded product.
  • This case illustrates that the Courts will support brand owners when enforcing their intellectual property rights against downstream infringers.
This information is intended as a general discussion surrounding the topics covered and is for guidance purposes only. It does not constitute legal advice and should not be regarded as a substitute for taking legal advice. DWF is not responsible for any activity undertaken based on this information.