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The written judgement of Mr. Justice Ryan in the Bayerische Moteren Werke Aktiengesellshaft V. Ronayne (trading as BMWcare) delivered on 19th December 2013,  [2013] IECH 612 became available recently.  The case is yet another reminder to those setting up in business to choose trade names, domain names and their general get-up carefully in order to ensure that they are not infringing any third party registered trademark rights or unregistered rights.

 

Mr. Ronayne used the name “BMWcare” both as a trade name, in his domain names and on his website.  The site did specifically state that he was independent of BMW by including statements like “independent advice and assessment” and “we are proud to be independent”.  BMW argues that his usage constituted infringement of their trademarks and the tort of passing off (effectively, infringement of unregistered rights).  He argues that his use was legitimate under trademark legislation and the case law of the CJEU (previously the ECJ).  BMW said they had no objection to him referring to BMW in the course of his business as long as it was done in a legally permissible way.  Mr. Ronayne relied on the judgement of the ECJ in Deenik that Mr. Deenik had an entitlement to call himself a “BMW specialist”.  A key part of BMW’s submissions in this case were that Mr. Roynane had overstepped the mark in relying on the defence of usage of a trademark in honest practice in industrial and commercial matters.  Whilst he could refer to BMW to advertise his services, he could not justify the use of the trading name and the domain names.  The disclaimer on his website was inadequate, insufficiently drafted and in small print at the bottom of the site.

 

Mr. Justice Ryan held in favour of BMW.  He found that Mr. Roynane had committed both trademark infringement and the tort of passing off.  In reviewing the relevant case law, it was noted that in Deenik, Mr. Deenik was permitted to refer to himself as a “BMW specialist”.  The case of Porsche v Van Den Berg was also referred to. In that case the court considered that the usage of the expression “Porsche specialist Van Den Berg” in a trade name or as a commercial sign to distinguish goods and services may imply that there was a connection between Mr. Van Den Berg’s business and Porsche over and above the fact that he specialised in those cars (the court holding against Mr. Van Den Berg).  In this case, Mr. Justice Ryan considered that Mr. Ronayne had gone further.  He adopted a name that attaches to the BMW mark and name, a word in common use and of general meaning. The name is not specific to his business but in general application.  In the Porsche case, the public knew that it was Mr. Van Den Berg’s business.  The legislation allows use of a trademark to describe a person’s business in accordance with honest practice, it does not permit somebody to create a business out of another person’s trademark. Mr. Justice Ryan considered that “BMWcare” in effect did that.  He found that there were strong indications of commercial connection and that the statements on the website that the defendant’s business was independent were not a sufficient disclaimer to eliminate the indications of commercial connection.  The court found that the defendant took unfair advantage of the plaintiff’s marks and that his actions were detrimental to their marks.