Using brand names on websites
Use of Brand Names On Websites
Marketing a service or product is a very important part of creating brand awareness and generating sales. Brand names have meaning to people. They are associated with good reputation or in some cases not so good. Businesses spend millions on building brand names and creating brand awareness. Obviously a great way to promote your business is to use these brand names in your website business description, item descriptions, keywords, search tags to try to project the image that you are associated with them. There will be no repercussions if you use brand names, right? Well not quite.
The recent case of BMW v Tecnosport London Ltd at the Intellectual Property Enterprise Court – 2016] EWHC 797 (IPEC) illustrates the point. Judgment was handed down on the 13 April 2016 by Judge Hacon in characteristic clarity.
The case involved issues of EU trade marks; trade mark infringement; passing off amongst other things.
BMW claimed that Tecnosport London Ltd (TL) had infringed three of its trade marks. BMW also claimed passing off with respect to the repair services offered by TL. BMW claimed that TL were misrepresenting their repair services as being associated with or approved by BMW.
TL had used the famous BMW logo on its Twitter account. TL’s director had worn a shirt with the BMW logo printed under the business name. The BMW logo was also displayed on the signs outside and inside the business premises and on business cards. TL’s website also displayed the BMW logo.
BMW claimed that TL did not have permission to use the logos. That a substantial proportion of TL’s customers or potential customers would be misled into thinking that TL was associated with BMW. That TL was a BMW approved dealer. TL argued that use of the logo was not limited to authorised dealers. TL argued that the packaging of spare parts that it had passed on to customers already contained the BMW logos.
TL submitted that its use of the logos:
(1) merely conveyed to the average consumer that it was a specialist in the repair and maintenance of BMW vehicles using genuine BMW spare parts, not an authorised dealer; (2) was not intended to take unfair advantage of their distinctive character or repute.
Judge Hacon gave judgement for BMW in part.
(1) Regarding the round BMW logo, it was likely that the average person (who uses a BMW product or service) had come to believe that it would only be displayed if it was authorised by the manufacturer. Even if that was not the case, at the least TL’s use of the round BMW logo on and in its premises would cause the average person to wonder whether it was an authorised dealer. In that way such use would negatively or badly affect the trade mark in terms of its function of pointing to origin.
Further, the average person (who uses a product or service) would tell the difference between a logo displayed on the outside of a garage and one on the packaging of genuine BMW spare parts. The logo on the wall of the premises would be seen as associated with BMW and the logo on the packaging will be seen as being sold by TL but not associated with it particularly if it had words such as “Real BMW Parts”.
As to the BMW mark, the position was different. BMW had strongly expressed that the average person (who uses a product or service) would not believe that the BMW lettering brought across any hint of authorised use in general, but that it did when it is closely associated with TL’s business name. As was the case with the shirt or Twitter account. BMW had not provided enough evidence to establish that that was the average consumer’s perception of BMW signs. Therefore, TL had violated the round logo and the M logo under Regulation 207/2009 art.9(1), but not the BMW mark.
(2) Related to unfair advantage, it was the factual detached effect of the use of the trade mark that mattered, not the user’s personal intention.
Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch), [2015] E.T.M.R. 16 and Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch), [2014] E.T.M.R. 28
The use of the round BMW logo brought across to the average person (who uses a product or service) that the garage was an authorised dealer, giving it an improved ability to trade and taking unfair advantage of the round logo’s character or reputation.
However, the use of BMW on the director’s shirt and the Twitter account had brought across nothing more than that TL traded or (focused on doing one thing very well) in the maintenance and repair of BMW cars. That was not enough by itself to show that it had taken unfair advantage of the BMW mark.
So if you are developing a website or mobile app for retail, discount or coupon or any other kind of website service you should get some specialist legal advice before using Ralph Lauren’s trademarks, or any other well-known brands. You should also take advice as to whether you can use brand names in your keyword advertising. For a full list of the types of website we advise on please click here.