BMW takes the fast lane to victory

The existence of an infringing company name on the companies register was sufficient for BMW to be granted summary judgment in its claims for passing off and trade mark infringement.

02 April 2019

BMW has been granted summary judgment for its claim that the existence of the company name 'BMW Telecommunications Limited' on the companies register amounted to passing off and trade mark infringement in the Intellectual Property Enterprise Court (IPEC). This case is a welcome decision for rights holders, concerning the protection of very famous marks and a reminder that, in appropriate cases, there are alternative routes to the company names tribunal.

Background

BMW applied for summary judgment against BMW Telecommunications Limited and the second defendant, the company’s sole director, whose initials are 'B.M.W.'. BMW, in the context of its application for summary judgment, successfully argued that: a) a substantial proportion of the public viewing the company name on the register would believe that the company was associated with BMW (and this amounted to passing off); and b) that the company name infringed its 'BMW' trade mark.

During the course of the litigation, the disputed company name was changed to one that BMW did not object to. Nevertheless, BMW pressed on with its application for summary judgment to prevent the director incorporating infringing company names in the future (as he had done in the past). BMW and the second defendant had previously entered into a co-existence agreement concerning another incorporation which also contained 'BMW' in its name.

The ‘One in a Million’ case applied

The director asserted that he did not advertise the company and only used the company name on invoices (which were made out to railway companies), so there could be no confusion. The Judge was not persuaded.

The court applied the principles in British Telecommunications ltd v One in a Million [1999] 1 WLR 903, which concerned passing off in the context of a domain name registration. It was held that there was not a distinction between the act of registering a domain name and the incorporation of a company name. In the present circumstances, where the company is so well known, it is not essential to evidence the likelihood of confusion from those viewing the companies register. The act of registration itself, and the name appearing on the register, could lead to the likelihood of a false representation that the defendant was connected to the rights holder and could be detrimental to its reputation.

Summary Judgment

Summary judgment involves an early determination and the threshold for applicants is therefore high: BMW had to show that the defence had no real prospect of success and there was no other compelling reason why the case or issue should be disposed of at a full trial.

It was held that the defendant had no prospect of establishing at trial that no substantial proportion of the public, viewing the companies register, would have believed that the defendant was associated with BMW. This analysis also applied to trade mark infringement.

How is this case useful?

This case is a helpful reminder of the routes available for enforcing intellectual property rights. Most company names issues are dealt with by the company names tribunal, which offers a cost effective mechanism in circumstances like this. However, where rights holders are faced with repeat offenders, proceedings can sometimes be the better route. The IPEC offers a less costly and less complex alternative to High Court proceedings and summary judgment in clear infringement cases is a useful tool to obtaining a quick and cost effective judgment.

How can Burges Salmon help?

If you would like any further information, please contact Emily Roberts or Jeremy Dickerson, or your usual intellectual property team contact.

Key contact

Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

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