IP Update – Trademark Infringement

BAYERISCHE MOTEREN WERKE AKTIENGESELLSCHAFT V EDWARD RONAYNE (TRADING AS BMWCARE) [2013] IEHC 612

A recent decision of the Irish High Court examined the use of the BMW word mark by a business which specialises in repairing BMW cars but is not associated with BMW. In a decision of Mr. Justice Ryan, it was held that the Defendant, Mr. Edward Ronayne who traded as "BMWCare" was engaged in trademark infringement and passing off. The Court held that Mr. Ronayne's use of "BMW" went beyond advertising his services, that he had sought to create an identity using the name "BMW" and had not done enough to avoid the inference of a commercial connection.

The Background

High Court proceedings were issued by BMW, the worldwide company with a well-recognised brand, holding a number of internationally recognised trade marks in December 2010. The Defendant was Edward Ronayne (trading as BMWCare) who operated a garage in the west of Ireland specialising in BMW repairs. Mr Ronayne used the name "BMWCare" in his email address and domain name. He also registered it as a business name and, for a time, had used the BMW roundel logo on his website.

The Issues

BMW claimed that this usage constituted infringement of its trade marks rights and the tort of passing off as Mr. Ronayne was passing off his business as being associated with BMW. BMW stated that it had no objection to Mr Ronayne referring to BMW in the course of his business as long as it was done in a legally permissible manner.

Mr Ronayne argued that he had deliberately attempted to disassociate himself from BMW by including on his website statements such as: "Independent advice and assessment" and "We are proud to be independent". He also claimed that his use of that name was legitimate under section 15(2) of the Trade Marks Act 1996 and the CJEU (previously ECJ) case law.

Sections 15(2)(b) and (c) of the Trade Marks Act 1996 provides that a registered trade mark is not infringed by the use of indications concerning, among other factors, the kind and intended purpose of a service; or by the use of the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular, as accessories or spare parts "provided that such use is in accordance with honest practices in industrial and commercial matters". BMW argued that Mr. Ronayne's actions in trading under the BMWcare name was in breach of section 14(3) of the Trade Marks Act as it was tarnishing its mark, given that BMW...