October 18, 2019

October 18, 2019

Subscribe to Latest Legal News and Analysis

October 17, 2019

Subscribe to Latest Legal News and Analysis

October 16, 2019

Subscribe to Latest Legal News and Analysis

Can the Mere Registration of Company Name Infringe? In the Case of BMW, Yes!

On 12 February 2019, car manufacturer (and globally recognised car brand) BMW was granted summary judgment in its claims for passing-off and trade mark infringement against BMW Telecommunications Ltd and Benjamin Michael Whitehouse (the sole director of BMW Telecommunications Ltd). The respondents were a consultancy business providing services for railway signaling and telecommunications.

The facts and arguments

Following the incorporation of BMW Telecommunications Ltd by Mr Whitehouse (whose initials were BMW), BMW issued the High Court proceeding seeking declarations and injunctions (even though the company’s name had since been changed).

In support of its allegations of passing off, BMW argued that that by including the initials ‘BMW’ in the name of BMW Telecommunications Ltd it would inherently lead to a misrepresentation that it was associated with the claimant. In support of its claim of trade mark infringement BMW relied on its ‘BMW’ word trademark for goods and services including vehicles and telecommunications.

In its defence the respondents argued that the company name was never advertised, but only used by the second defendant to invoice the rail companies for whom he had worked, so there would be no confusion.

The decision

In finding for BMW, the Court followed the earlier decision in British Telecommunications Plc v One in a Million Ltd [1999] 1 W.L.R. 903 in which registering domain names including then names of well-known companies was held to lead to a likelihood of false representation that the defendant was connected with the owner of the goodwill in the corporation names. While the BMW case concerned company names rather than domain names, the principles were equally applicable according to the decision of His Honour Judge Hacon.

The Court also considered that even if the defendant’s clients had not assumed association (as alleged by the defendants), if a substantial proportion of the public, when consulting the companies register and seeing the company’s name, would believe that there was no association with the claimant. The Court held that as BMW was a famous brand there would be no need for specialist evidence to establish the impression conveyed when consulting the register and that such confusion would arise. Accordingly, the claimant was granted summary judgment on passing off and trade mark infringement.

Conclusion

This case, whilst somewhat fact specific, should provide reassurance and comfort to brand owners (particularly those with global reach and notoriety) that the potential protection of their name can be wide ranging (and the mere registration of a company name could infringe their rights).

Daniel Cartmell, trainee solicitor assisted in this post.

Copyright 2019 K & L Gates

TRENDING LEGAL ANALYSIS


About this Author

Simon Casinader, KLGates, IP lawyer
Senior Associate

Mr. Casinader is a Senior Associate in Melbourne's intellectual property team with a range of experience protecting and enforcing intellectual property rights. This experience includes developing and enforcing brand protection strategies on matters for trade mark, copyright and design owners, and providing contentious and non-contentious advice in relation to all aspects of intellectual property law.

Mr. Casinader has extensive experience prosecuting Australian, New Zealand and international trade mark applications as well as trade mark and patent opposition proceedings before IP...

+61.3.9640.4367