Design - Design right - Infringement - Claimant company holding community registered designs and community trademarks
Pollen Estate Trustee Company Ltd Bayerische Motoren Werke Aktiengesellschaft v Round and Metal Ltd and another: ChD (Pat) (Mr Justice Arnold): 27 July 2012
The claimant company held community registered designs Nos: 000032438-0004; 000304274-0004; 000609458-0006; and 000936281-0005 for wheels for motor vehicles. The claimant further held community trademarks Nos: 000091835 for the letters ‘BMW’; 000091884 for a sign device; 000302406 for the word ‘MINI’; 004319844 for a second sign device; and 0945064 for a third sign device.
The first defendant company imported and sold replica alloy wheels for motor cars, including those of the claimant company. The first defendant further sold adhesive stickers for attachment to the wheels (the stickers), which reproduced the logos which formed the claimant’s sign devices.
The first defendant operated an online store, which listed ‘18" BMW parallel wheels’ and contained a photograph of a wheel bearing the word ‘MINI’. The claimant issued proceedings contending that the first defendant had infringed the community registered designs and community trademarks. The first defendant denied that its acts had amounted to infringement, relying on article 110(1) of the council regulation (EC) 6/2002 (on community designs) (the regulation), which excluded protection for a design right which constituted a component part of a complex product for the purpose of the repair of that complex product so as to restore its original appearance.
There was no dispute that the second defendant was jointly liable for any infringements of the claimant’s rights that the first defendant had committed.
The principal issues for determination were: (i) whether the defendants had infringed the claimant’s community registered designs; (ii) whether the defendants had infringed the claimant’s community trademarks; (iii) whether the defendants had a defence to infringement of the claimant’s community trademarks under articles 12 and 13 of the council directive (EC) 98/71 (on the legal protection of designs) (the directive). The application would be allowed.
(1) Properly construed, article 110(1) of the regulation would not prevent registration of designs of component parts of complex products. It followed that article 110(1) of the regulation would operate as an exception to the right conferred by registration in particular circumstances of use of the design. The burden would lay on the defendant to establish that the exception applied. Further, article 110(1) of the regulation would be interpreted as being restricted to component parts which had been dependent on the appearance of the complex product. The language of article 110(1) of the regulation directed attention to what the part would normally be used for (see , ,  of the judgment).
In the instant case, the designs of alloy wheels of the kind in issue had not been dependent on the appearance of the car, because it had been clear from the evidence that replacement of wheels of one design with wheels of a different design would be a perfectly realistic option. Further, article 110(1) of the regulation would not apply as the defendants’ replica wheels had not been used to restore a complex product to its original appearance as supplied by the manufacturer or its authorised dealer. The defendants’ replica wheels had been used to improve the appearance of a car (see ,  of the judgment).
The first defendant had infringed each of the community registered designs and the second defendant would be jointly liable for the infringement (see ,  of the judgment).
(2) The first defendant had used the sign devices by supplying the stickers bearing the sign devices together with wheels to which they would be affixed. Further, the first defendant had not established that there would be no possibility of confusion flowing from its use of the signs. There would be a real likelihood of confusion, since the manner of use with respect to the online store had been such to give the impression that the wheels in question had been genuine BMW wheels. Further, although the goods had not been identical to those covered by the ‘MINI’ community trademark, they had been similar. The use of the sign device in the photograph had given rise to a likelihood of confusion (see , , ,  of the judgment).
(3) The defence under article 12 of the directive had depended upon the first defendant having acted in accordance with honest practices in industrial and commercial matters. That had not been the case where there had been a likelihood of confusion. Further, the court had been unable to understand how it could possibly be suggested that the first defendant had a defence under article 13(1) of the directive. The instant case had nothing to do with exhaustion of rights (see ,  of the judgment). The first defendant had infringed the community trademarks and the second defendant would be jointly liable for the infringement (see ,  of the judgment).
Piers Acland QC and Hugo Cuddigan (instructed by Mishcon de Reya) for the claimant; Mark Platts-Mills QC and Jonathan Hill (instructed by Simons Muirhead & Burton) for the defendants.