BMW successfully defends its trademark with passing off claim
The car manufacturer BMW has successfully defended its trademark after bringing a claim of infringement and passing off to the Intellectual Property Enterprise Court.
The other company in the case was BMW Telecommunications Ltd, whose owner had the initials BMW. It provided consulting services to railway companies regarding signalling and telecommunications.
The car manufacturer claimed the inclusion of "BMW" in the company name infringed its trademark and would inherently lead to a misrepresentation that the two companies were connected.
The telecommunication company’s defence was that it did not advertise its name and only used it to invoice the clients for whom it worked, so there had been no confusion.
It then changed its name to "BW Telecommunications Ltd", but BMW maintained its application for summary judgment as there was a risk that the owner would register another "BMW" company name in future.
The court found in favour of the car manufacturer. It held that even if the telecommunication company’s clients had not been confused, that did not eliminate the risk of confusion for a person consulting the companies register.
There was no real prospect of establishing that even an insignificant portion of the public would not believe that there was an association with BMW, the famous car manufacturer. It was therefore granted summary judgment on its claims of trademark infringement and passing off.
Please contact Sarah Liddiard if you would like advice about trademarks and protecting your business against copyright infringement.