BMW v GRANDMARK, AGAIN!

We’ve discussed the case of BMW v Grandmark in the past. This is the case where BMW tried to stop Grandmark selling generic or so-called ‘replacement’ parts for BMWs on the basis of Aesthetic Design registrations for a bonnet, a grill, a headlight assembly and a front fender. BMW also claimed that Grandmark had infringed various trademark registrations. BMW lost in the first court and the matter went on appeal. The Supreme Court of Appeal (SCA) recently handed down its judgment.

The SCA upheld the earlier court’s findings. On the design issue, it said that the Aesthetic Design registrations were invalid because ‘aesthetic designs are those that invite customer selection – and customer discrimination between articles – solely by their visual appeal.’ Car parts, on the other hand, are generally ‘selected for the function they perform – which is to replace components so as to restore the vehicle to its original form…most customers will not even see the component before it is fitted to the vehicle, nor make any selection at all, other than giving instructions for the restoration of the vehicle.’ So most car parts aren’t aesthetic and cannot be validly registered as Aesthetic Designs.

On the trademark issue the SCA agreed that Grandmark was not using BMW’s trademarks in a ‘trademark manner’, in other words in a way that is likely to be interpreted as designating origin. If a mark is used in a descriptive or otherwise ‘non-trademark manner’ there is no infringement according to two recent previous cases (both of which actually involved BMW). The SCA said that by using the mark BM in ways like this:

GORDON AUTO BODY PARTS CO. LTD; MFG LOT: 1004A; GD471: BM3 SRS 92-05 HOOD

Grandmark was simply using it in a descriptive manner: ‘It can hardly be said that the trademark is used as a badge of origin when the label states it to have a different origin. Moreover, the numbering surrounding and immediately following the mark clearly reflects its use to identify the component concerned.’ So there was no trademark infringement either.

As the design registrations were invalid and the trademark registrations had not been infringed, there was no need for the SCA to consider Grandmark’s request to refer the manner in which BMW sought to enforce its IP rights to the competition authorities.

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