Bayerische Motoren Werke AG v Technosport London Ltd & Anor [2016] EWHC 797 (IPEC)

Case No IP14M02599[2016] EWHC 797 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate 13/04/2016
Before
HIS HONOUR JUDGE HACON
Between
BAYERISCHE MOTOREN WERKE AGClaimantTECHNOSPORT LONDON LTDDefendantsGEORGE AGYETONDefendant
Gwilym Harbottle (instructed by Palmer Biggs Legal) for ClaimantCharles Irvine (instructed by Hoffman-Bokaei) for DefendantHearing Hearing dates: 1-2 March 2016
JudgmentJudge Hacon :Introduction
[1]The claimant (‘BMW’) is a manufacturer of motor vehicles which are sold in this country and elsewhere under that well known mark.[2]The first defendant (‘TLL’) is a company dealing in the repair and maintenance of cars, mostly BMWs. It trades in North West London, formerly at 5 Adrian Avenue, Staples Corner, London NW2 1LW (‘the Original Premises’) and now at Unit 2, Horseshoe Close, London NW2 7JJ (‘the New Premises’) to which the business moved at the end of 2012.[3]TLL has used ‘BMW’, i.e. signs identical to BMW’s trade marks, in the course of its business. BMW alleges that in so doing TLL has infringed those trade marks and passed off its services as being associated with, or approved by, BMW.[4]TLL denies both infringement and passing off. In broad terms it says firstly that its use of the signs did no more than accurately convey the message that TLL was a garage specialising in the maintenance and repair of BMW cars. Secondly, TLL argues that BMW had in any event authorised TLL to use the trade marks.[5]The second defendant (‘Mr Agyeton’) is the sole director and shareholder of TLL. BMW alleges that he is jointly liable with TLL.

The Trade Marks

[6]Three registered trade marks are relied on (collectively ‘the Trade Marks’): (1) Community Trade Mark no. 000091835 in the form of the letters BMW (‘the BMW Mark’), registered in respect of, among other things, the following services in Class 37:
“maintenance and repair of cars, motors, engines and parts of these goods; cleaning of automobiles; installation services”. (2) Community Trade Mark no. 000091884 (‘the Roundel’), a device mark in the following form: The Roundel is registered in respect of, among other things, similar services in Class 37: “maintenance and repair of cars, motors and engines and parts of these goods; cleaning of automobiles; installation services”. (3) International registration no. 1000463 (‘the M Logo’), designating the European Union, a device mark in the following form: The M Logo is registered in respect of, among other things, the following services in Class 37: “Repair and maintenance of motor vehicles and parts thereof and of engines for motor vehicles and parts thereof; tuning of motor vehicles and engines.”
TLL’s uses of signs Trade mark infringement

TLL’s uses of signs

[7]The following uses of the Trade Marks have been pleaded by BMW: The BMW Mark(1) (i) Mr Agyeton has worn a shirt bearing a sign identical or similar to the BMW Mark in the course of providing TLL’s repair and maintenance services; (ii) Mr Agyeton and/or TLL have owned a Twitter account with the name @TechnosportBMW. The Roundel(2) TLL has displayed a sign the same as, or similar to the Roundel on (i) a facia board on the exterior of the Original Premises (which is also shown on the defendants’ website at www.technosport.co.uk (‘TLL’s Website’)); (ii) in the interior of the New Premises particularly on a banner displayed in the reception area, (iii) on the outside of a van used to conduct the business, and (iv) on business cards distributed to customers. The M Logo(3) One or both defendants have displayed two signs on TLL’s website, one of which is identical or similar to the M Logo, the other similar to it.[8]Allegations of other uses of signs by TLL cropped up during the trial but it is enough for me to consider the uses pleaded.[9]BMW alleged that the uses of the signs complained of were in each case an infringement of its corresponding Trade Mark pursuant to art.9(1)(a) and (b) of Council Regulation (EC) No. 207/2009 (‘the Trade Mark Regulation’) and, in the case of the BMW Mark and the Roundel, also art.9(1)(c) of the Trade Mark Regulation.

Passing Off

[10]BMW alleges that TLL’s uses of signs referred to above were likely to lead a substantial proportion of the public or trade to believe that TLL’s services were those of BMW, or were associated in the course of trade with BMW. In effect this meant that customers and potential customers of the TLL would be caused to believe that TLL was an approved BMW dealer.

The issues

(a) and (b)

[11]Mr Irvine, who appeared for the defendants, did not dispute that the signs complained of were each either identical or similar to the Trade Mark that the sign was alleged to infringe, and that the services for which they were used were identical or similar to the services in respect of which the Trade Marks were registered. Thus the elements of infringement under both art.9(1)(a) or 9(1)(b) were satisfied subject to the two matters I summarised above. First, TLL argued that its use of the signs was not liable to affect the functions of the Trade Marks. This was because the signs as used by TLL would in each case have conveyed to the average consumer that TLL was a specialist in the repair and maintenance of BMW vehicles, using genuine BMW spare parts. It was common ground that such a message would have been accurate. Secondly, TLL said that BMW had given its consent to the use of the signs.

Art.9(1)(c)

[12]In relation to art.9(1)(c) Mr Irvine submitted that a further element of infringement was missing, namely that the uses of signs complained of (the BMW and roundel signs) had not taken unfair advantage of the distinctive character or the repute of the Trade Mark concerned.

Art.12(b) and (c)

(b) and (c)

[13]The defendants also relied on art.12(b) and (c) of the Trade Mark Regulation which provides as follows: Article 12 Limitation of the effects of a Community trade mark A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade: … (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, provided he uses them in accordance with honest practices in industrial or commercial matters.[14]Mr Irvine argued that TLL’s use of the signs was to indicate a characteristic of TLL’s services, namely that genuine spare parts were used (art.12(b)). The use was necessary to indicate the intended purpose of its services, namely that it repaired BMW cars (art.12(c)). But he also submitted that in this case the defence under art.12(b) and (c) stood or fell with his submission under art.9(1) that, as used by TLL, the signs complained of conveyed to the average consumer that TLL was a specialist in the repair and maintenance of BMW vehicles using genuine BMW spare parts. Art.12 therefore did not raise any distinct issue.

Passing off

[15]Mr Irvine said that the message conveyed to the average consumer (in the trade mark sense) by the signs in issue would be the same as the message conveyed to a substantial proportion of the relevant public in the context of BMW’s claim for passing off. There was therefore a large overlap with trade mark infringement. Mr Irvine said that if the message was as the claimants alleged, and there had been no consent by BMW to TLL’s use of the signs, it followed that there had been a misrepresentation by TLL. The remaining elements of passing off (goodwill and damage) were satisfied and so TLL would then be liable for passing off.

The issues at trial

[16]Pursuant to this, Mr Irvine summarised the issues I had to resolve. He said that they were the following:(1) Did TLL’s use of each of the signs, in the manner in which they were used by TLL, convey to the average consumer (and a substantial proportion of the relevant public) nothing more than that TLL was a specialist in the repair and maintenance of BMW vehicles, using genuine BMW spare parts?(2) In the case of the BMW Mark and the Roundel, did TLL’s use of the corresponding signs without due cause take unfair advantage of the distinctive character or repute of the Trade Marks?(3) Did BMW consent to TLL’s use of any of the signs in manner complained of?(4) Was Mr Agyeton jointly liable with TLL for trade mark infringement and passing off if TLL is found liable?[17]Mr Harbottle, who appeared for BMW, did not dissent from this summary of what remained in dispute between the parties, save in one regard. He said that if, which BMW did not accept, there had ever been any consent to what TLL was doing, that consent had been withdrawn before the start of these proceedings. The message conveyed by TLL’s use of the signs The Roundel

The message conveyed by TLL’s use of the signs

[18]It was common ground that there are two types of dealer who specialise in the repair and maintenance of BMWs: those that are authorised by BMW and those that are not – often referred to as ‘independent’ dealers. Joanne Walsh, brand protection manager for BMW (UK) Limited (‘BMW UK’) explained that in the UK the former have a contractual relationship with BMW UK and the latter do not. Use of the Trade Marks by authorised dealers is governed by a formal licence from BMW through a contract with BMW UK. There is no such licence granted to independent dealers.[19]However, the fact that there was no formal licence to dealers such as TLL does not answer TLL’s main point. In particular BMW concedes, as it must, that certain use of the BMW Mark will not engage art.9. TLL advertising itself to be “The BMW Specialists” on a facia at the front of its premises is an obvious example because in that context the use is not liable to affect any of the functions of the trade marks, see BMW AG v Deenik (Case C-63/97) [1999] E.C.R. I-905 at [37]-[38] and L’Oréal SA v Bellure NV (Case C-487/07) [2009] E.C.R. I-5185 at [57]-[58]. The sign ‘BMW’ in such a context does not indicate anything inaccurate about the origin of any goods or services provided by BMW, nor does it affect the other functions of the BMW Mark: the guarantee of quality and the functions of communication, investment and advertising. The sign was part of the accurate message that the services offered by TLL involved particular expertise in relation to BMW vehicles.[20]Mr Irvine submitted that the same applied to all TLL’s uses of the BMW sign and also in relation to the roundel and M logo signs as used by TLL. None of them conveyed to the average consumer anything more than that the services provided by TLL were for BMW vehicles and that TLL were specialists in providing maintenance and repair services for BMWs, using genuine BMW parts.[21]With regard to the roundel sign, Mr Irvine relied on the evidence of Mr Agyeton and in particular copies of pages from forums on the internet exhibited by Mr Agyeton in which users of car repair services stated their views of the services offered by a number of garages, including TLL. In one of these, in December 2011 an individual in London asked about TLL, identified as “a BMW specialist garage” in North London, wondering whether anyone had experience of its services. One reply came in April 2012, in which the respondent highly recommended TLL and said this:
“…it is always a leap of faith with independent BMW garages but George [apparently Mr Agyeton] and his team have my vote.”
In another forum, other individuals discussed the quality of TLL’s services. This forum, called ‘the M3cutters’ displayed a roundel sign. In October 2013 an individual asked how much TLL charged for a piece of maintenance work that another contributor to the forum had mentioned. This individual said that TLL were not far from him and he was “looking for a good Indy”. A response shortly afterwards recommended both TLL and a garage in Cambridge, adding that the downside with the Cambridge garage was “the BMW rates”.[22]This indicates that two individuals who were familiar with TLL knew that it was not an authorised dealer and a third, who may or may not already have known, was told that it was an independent dealer. But it does not prove anything about their perception of the message conveyed by the roundel sign used by TLL, never mind the perception of the average consumer. Mr Agyeton said that TLL’s roundel sign was not used on the facia outside the Original or New Premises, on the banner inside either premises or on the van before 2012. (The date of first use on the business cards was not established.) In his witness statement he said this:
“…customers who visit my workshop are normally through a word-of-mouth recommendation from existing customers. When new customers visit the workshop, they are in no way confused as to whether this is BMW dealership or independent specialists. The majority of my network of clients come from BMW forums where people recommend [TLL] as a good and reputable independent specialist.”
Assuming, as Mr Agyeton said, that customers before 2011 knew that TLL was not an authorised dealer, those who visited TLL from 2012 onwards, when the roundel sign appeared, would in large part have come on the recommendation of an existing customer and apparently would have been told in advance of visiting TLL that it was an independent specialist. Therefore the belief on the part of three of TLL’s customers that it was an independent dealer, as was explained to them, proves nothing with regard to the message conveyed by the roundel sign to an unprompted average consumer.[23]BMW’s primary position was that subject to an exception to which I will come, no lawful use could be made of the Roundel by car dealers unless the dealer was authorised. I was directed to agreements which authorised dealers must sign which limits the manner of their use of the Roundel. Mr Harbottle submitted that it was common ground that the average consumer would distinguish authorised dealers from independent dealers, that in fact only authorised dealers displayed the Roundel on and in their premises (with rare infringing exceptions) and it was therefore to be inferred that the average consumer had become educated to believe that the Roundel signified an authorised dealer.[24]It turned out that BMW was not in a position to take the simple stance that all use of the Roundel in relation to vehicle repairs invariably conveyed to the average consumer that the repairer was authorised by BMW. TLL was supplied with articles to promote the use of genuine BMW spare parts and the packaging for these bore the Roundel. Ms Walsh explained that this was a Genuine Parts Initiative Kit (‘GPIK’) which was issued to authorised dealers in 2013. It contained items for the dealer, such as a guide, and items which would be passed on to customers such as car air fresheners and key rings. These items had the Roundel on them and the words “Genuine BMW Parts”. Ms Walsh said that BMW UK was aware that the authorised dealers would pass on GPIKs to independent dealers with whom they had a relationship, i.e. to whom they supplied BMW parts and did not suggest that this was done without the authority of BMW.[25]It follows that from 2013 the average consumer, at least in the UK, would have been aware that independent dealers supplied some goods bearing the Roundel promoting genuine BMW spare parts.[26]The only evidence from consumers of car repair and maintenance services was that concerning the TLL customers and forum users whom I have discussed above, who probably knew in advance of seeing the roundel sign at TLL that TLL was an independent dealer. There was no primary evidence from actual consumers that would shed light on the view taken by the notional average consumer regarding the roundel sign used by TLL. I must nonetheless reach a view on the message conveyed by that sign on the evidence available, bearing in mind that the well established qualities of the average consumer: reasonably well-informed, reasonably observant and circumspect.[27]Mr Harbottle referred me to Interflora Inc v Marks & Spencer plc [2011] E.C.R. I-8625. This concerned the use by Marks & Spencer of Interflora’s trade mark INTERFLORA and variants on that word as keywords on the Google search engine, with the result that individuals using ‘Interflora’ in a Google search were liable to be presented with an advertisement from Marks & Spencer offering a fresh flower delivery service. The issue in relation to art.9(1)(a) of the Trade Mark Regulation, broadly, was whether Marks & Spencer were using ‘Interflora’ as sign in relation to the relevant goods and services within the meaning of that article. The Court of Justice held that a trade mark proprietor is entitled to prevent a competitor from using his trade mark as a keyword in an internet referencing service where such use is liable to have an adverse effect on one of the functions of a trade mark, including in particular the function of indicating origin. The Court said this:
“[45] Where a third party’s advertisement suggests that there is an economic link between that third party and the proprietor of the trade mark, the conclusion must be that there is an adverse effect on that mark’s function of indicating origin. Similarly, where the advertisement, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the goods or services at issue that reasonably well-informed and reasonably observant internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or whether, on the contrary, it is economically linked to that proprietor, the conclusion must be that there is an adverse effect on that function of the trade mark (Google France and Google, paragraphs 89 and 90, and Portakabin, paragraph 35).”
[28]Mr Harbottle submitted that an analogy can be drawn between the average consumer’s perception of whether there is an economic link between the advertiser and the trade mark proprietor in the circumstances of Interflora and the average consumer’s perception of the message conveyed by a trade mark in circumstances such as the present case. I agree. If TLL’s use of its roundel sign conveyed a message which was vague, such that the average consumer would have been unable to determine whether there was an economic link between TLL and BMW – specifically whether TLL was an authorised dealer of BMW – I must conclude that TLL’s use of its roundel sign adversely affected the function of the Roundel trade mark and thus infringed BMW’s trade mark rights.[29]I take the view and find that it is likely that the average consumer had come to believe that the Roundel would only be displayed on and in the premises of an undertaking which maintains and repairs vehicles if that undertaking was authorised by BMW – because that will have been the almost invariable experience of actual consumers. Even if that had not been the case, at the least TLL’s use of the roundel sign on and in its premises would have caused the average consumer to wonder whether TLL was an authorised dealer and thus would have affected the origin function of the Roundel mark.[30]In relation to this, I think that the average consumer would distinguish between a roundel sign displayed on the outside of a garage or prominently inside the premises, on the one hand, from, on the other hand, a similar sign either on the packaging of spare parts supplied by the garage or on a promotional item, particularly where there are also displayed the words ‘Genuine BMW Parts’. The former will convey that the services offered by the garage are authorised. The latter will indicate that the spare parts supplied by the garage come from BMW.

The M Logo

[31]The position is similar in relation to the M Logo. Bettina May, who is internal legal counsel on trade mark, designs and legal issues at BMW, said that the right of dealers in the UK to use the Trade Marks is only granted by means of sub-licences to authorised dealers via BMW UK. The licence is subject to a number of restrictions as to the manner of use of the Trade Marks and does not permit authorised dealers to sub-license independent dealers. So the M Logo will only have been used by authorised dealers, save for the unlawful use by TLL and other unlicensed users from time to time. Unsurprisingly, BMW has a policy of restraining unlicensed use. It is likely that actual consumers, and thus the average consumer, would have taken TLL’s use of its M logo signs to mean that TLL was an authorised dealer. I would add that had TLL’s use of its M logo signs gone no further than giving the average consumer cause to wonder whether it was an authorised dealer, this would still have been sufficient to affect adversely the origin function of the M Logo.

The BMW Mark

[32]BMW’s pleaded allegations of infringement of the BMW mark concerned the use of the mark in conjunction with TLL’s trading name ‘Technosport’. Specifically, Mr Agyeton wore a shirt on the breast of which appeared TECHNOSPORT and beneath it BMW. TLL also owns a Twitter account with the name ‘@TechnosportBMW’. BMW’s case was that authorised BMW dealers tend to style themselves by reference to their name immediately followed by BMW. There were examples in the evidence, including ‘Stephen James BMW’, ‘Berry BMW Chiswick’ and ‘Hexagon BMW’. Mr Agyeton conceded that many authorised dealers presented their trading names alongside BMW in this way. For BMW, Ms Walsh said that the use of the BMW Mark on Mr Agyeton’s shirt was not in accordance with the manner of use permitted to authorised dealers.[33]BMW’s argument in relation to the BMW Mark was more subtle and to my mind more flimsy. It was based on the assertion that while the average consumer would not believe that ‘BMW’ conveys any implication of authorised use in general, it does when immediately attached to a dealer’s name. It also conveys that implication where used in a manner which, according to the strictures contained in the contracts with authorised dealers, is not permitted use – such as the manner of representation on Mr Agyeton’s shirt. In my view, the burden of establishing that the average consumer’s perception of BMW signs embraced such subtleties would require more evidence than BMW produced. It would probably need evidence from actual consumers. I find that TLL’s use of its BMW signs did not convey to the average consumer any implication of TLL being an authorised dealer. Did TLL’s use of the BMW Mark and the Roundel without due cause take unfair advantage of the distinctive character or repute of the Trade Marks? The law[34]The reputation of the BMW Mark and the Roundel within the meaning of art.9(1)(c) was common ground. Mr Irvine also accepted that in the event I were to decide that TLL’s use of its BMW and roundel signs took unfair advantage of the distinctive character or repute of the corresponding Trade Marks, there would have been no due cause for so doing. The issue was just whether unfair advantage had been taken.[35]Arnold J considered the concept in Enterprise Holdings Inc v Europcar Group UK Ltd [2015] EWHC 17 (Ch); [2015] F.S.R. 22:
“[125] Unfair advantage. The Court of Justice described taking unfair advantage of the distinctive character or repute of a trade mark in Case C-487/07 L’Oréal SA v BellureNV [2009] ECR I-5185 at [41] as follows: ‘As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.’ [126] The Court of Justice explained the correct approach to determining whether unfair advantage has been taken of the distinctive character or repute of the trade mark in that case as follows: ‘44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69). ‘As regards the concept of ‘taking unfair advantage of the distinctive character or the repute of the trade mark’, also referred to as ‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.’ ‘44. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark’s reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark’s distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69). 45. In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark. … 49. In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coattails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.” [127] It is clear both from the wording of Article 5(2) of the Directive and Article 9(1)(c) of the Regulation and from the case law of the Court of Justice interpreting these provisions that this aspect of the legislation is directed at a particular form of unfair competition. It is also clear from the case law both of the Court of Justice and of the Court of Appeal in this country that the defendant’s conduct is most likely to be regarded as unfair where he intends to take advantage of the reputation and goodwill of the trade mark. Nevertheless, in Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] EWHC 110 (Ch), [2014] FSR 39 at [80] I held that there is nothing in the case law to preclude the court from concluding in an appropriate case that the use of a sign the objective effect of which is to enable the defendant to benefit from the reputation and goodwill of the trade mark amounts to unfair advantage even if it is not proved that the defendant subjectively intended to exploit that reputation and goodwill.”

This case

[36]Mr Agyeton’s evidence in cross-examination was that he had used the roundel sign at TLL’s premises because it was good for business. He wanted people to see that TLL’s business was connected with BMW, though he conceded that TLL’s prominent use of the words ‘BMW Specialist’ meant that the TLL roundel could have added nothing so far as that message was concerned. Mr Agyeton received correspondence from BMW UK in October 2006 which stated that he was not permitted to use BMW’s trade marks, to which I will return. In cross-examination Mr Agyeton said that the letter made him realise that BMW was not happy about TLL using the roundel sign, but he used it because was trying to enhance TLL’s business in selling the products. He was adamant that this did not mean that he was representing TLL as an authorised dealer.[37]Notwithstanding Mr Agyeton’s claimed intention, I have found that the roundel signs used by TLL did convey to the average consumer that TLL was an authorised dealer. As Arnold J stated in Enterprise Holdings, it is the objective effect of the use of the mark that matters, not the user’s subjective intention. TLL’s use of its roundel signs therefore took unfair advantage of the repute of the Roundel. In any event, even on Mr Agyeton’s claimed subjective view, the roundel signs gave TLL an enhanced ability to trade – apparently an advantage which was something more than being recognised as just a specialist in BMWs. Whatever that something might have been in Mr Agyeton’s eyes, it does not seem to have been justified. On that basis also, I think TLL was using the roundel signs to take unfair advantage of the distinctive character or the repute of the Roundel trade mark.[38]The position is different in respect of the BMW Mark. I have found that TLL’s use of ‘BMW’ did not convey to the average consumer anything more than that TLL traded or specialised in the maintenance and repair of BMW cars. Mr Agyeton said that his wearing the shirt which BMW complained about “put the ribbon on it”, but what he meant by that was not explored. In my view it is by itself insufficient to show that this use of ‘BMW’ took unfair advantage of the repute or distinctive character of the BMW Mark. Consent The law

Consent

[39]In the absence of express consent by a trade mark proprietor to use his mark, consent will be inferred in only very limited circumstances. In Zino Davidoff SA v A&G Imports Ltd (Joined Cases C-414 to 416/99) [2002] Ch. 109 the Court of Justice considered ‘consent’ within the meaning of art.7 of Directive 89/104/EEC (‘the Trade Mark Directive’) but indicated that the same considerations applied in relation to all of arts. 5 to 7 of the Trade Mark Directive, equivalent to arts. 9, 12 and 13 of the Trade Mark Regulation:
“[39] Articles 5 to 7 of the Directive embody a complete harmonisation of the rules relating to the rights conferred by a trade mark and accordingly define the rights of proprietors of trade marks in the Community: Silhouette [1999] Ch 77, 97, 98, paras 25 and 29. [40] Article 5 of the Directive confers on the trade mark proprietor exclusive rights entitling him, inter alia, to prevent all third parties ‘not having his consent’ from importing goods bearing the mark. Article 7(1) contains an exception to that rule in that it provides that the trade mark proprietor's rights are exhausted where goods have been put on the market in the EEA by the proprietor or ‘with his consent’. [41] It therefore appears that consent, which is tantamount to the proprietor’s renunciation of his exclusive right under article 5 of the Directive to prevent all third parties from importing goods bearing his trade mark, constitutes the decisive factor in the extinction of that right. [42] If the concept of consent were a matter for the national laws of the member states, the consequence for trade mark proprietors could be that protection would vary according to the legal system concerned. The objective of ‘the same protection under the legal systems of all the member states’ set out in the ninth recital in the Preamble to Directive 89/104, where it is described as ‘fundamental’, would not be attained. [43] It therefore falls to the court to supply a uniform interpretation of the concept of "consent" to the placing of goods on the market within the EEA as referred to in article 7(1) of the Directive. … [45] In view of its serious effect in extinguishing the exclusive rights of the proprietors of the trade marks in issue in the main proceedings (rights which enable them to control the initial marketing in the EEA), consent must be so expressed that an intention to renounce those rights is unequivocally demonstrated. [46] Such intention will normally be gathered from an express statement of consent. Nevertheless, it is conceivable that consent may, in some cases, be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his rights. [47] The answer to the first question referred in each of Cases C-414/99 to C-416/99 must therefore be that, on a proper construction of article 7(1) of the Directive, the consent of a trade mark proprietor to the marketing within the EEA of products bearing that mark which have previously been placed on the market outside the EEA by that proprietor or with his consent may be implied, where it is to be inferred from facts and circumstances prior to, simultaneous with or subsequent to the placing of the goods on the market outside the EEA which, in the view of the national court, unequivocally demonstrate that the proprietor has renounced his right to oppose placing of the goods on the market within the EEA.”
See also Dalsouple Société Samuroise du Caoutchouc v Dalsouple Direct Limited [2014] EWHC 3963 (Ch); [2015] E.T.M.R. 8, at [38].

This case

[40]The defendants did not suggest that BMW had given express consent. They therefore faced the considerable burden of establishing facts which unequivocally demonstrated that BMW had renounced its right to oppose TLL’s use of the Trade Marks. The evidence TLL advanced was that individuals from BMW UK and from authorised dealers had visited TLL’s premises, that they must have been aware of TLL’s use of the Trade Marks and had made no complaint about it.[41]It is not necessary for me to investigate this. Ms May’s unchallenged evidence was that in the UK licences under the Trade Marks could only be granted by BMW UK with BMW’s consent, that there had been no such consent other than in relation to authorised UK BMW dealers and that such dealers did not have authority to grant sub-licences. There was therefore no consent given by BMW to TLL to use the Trade Marks and no demonstration by BMW, unequivocal or otherwise, that there was.[42]Furthermore Mr Agyeton knew that there had been no consent from BMW. In a letter dated 20 December 2006, BMW (not BMW UK) wrote to TLL, drawing attention to its trade marks, enclosing a list of them, and drawing attention to its goodwill. BMW made its position clear:
“You have not been licensed or otherwise authorized to use our trademarks in the course of your trade. Your use of our trademarks creates the impression that you are connected with or approved by our company, which is not the case. This misleading indication is likely to cause confusion between our respective businesses and damage the goodwill of BMW AG. Your infringement of our trademark rights therefore cannot be allowed to continue.”
[43]Mr Agyeton accepted that having received that letter he knew in December 2006 that in BMW’s view TLL was infringing BMW’s trade marks. He later said that by late 2011 or early 2012, when he put up the facia on the Original Premises with the roundel on it, he had forgotten about BMW’s letter. Although Mr Agyeton may have forgotten the details of that letter, I find it hard to believe that he had forgotten the basic message: use of BMW’s trade marks by TLL, including the Roundel and M Logo, would infringe.[44]After investigations by BMW which led these proceedings, but before they were started in June 2014, BMW’s solicitors wrote to TLL and Mr Agyeton on 10 October 2013. This gave more detailed information regarding the acts to which BMW objected, broadly those which form the basis of these proceedings. Well before the proceedings started Mr Agyeton could have been in no doubt at all that he had no consent to use the Trade Marks.

Joint liability of Mr Agyeton

[45]In cross examination Mr Agyeton accepted that he was the guiding mind of TLL and that in effect he and TLL were one and the same. Mr Irvine conceded in closing that on that evidence Mr Agyeton would be jointly liable with TLL in respect of any trade mark infringements or passing off by TLL.

Passing off

[46]Counsel on both sides submitted that TLL’s liability for passing off stood or fell with its liability for infringement of the Trade Marks (see above). I need therefore say nothing about passing off, save this. Had I found that the message conveyed by TLL’s use of its roundel and the M logo signs in each case did no more than render the average consumer unable to determine whether there was an economic link between TLL and BMW, as opposed to causing the average consumer to take the view that there was such a link, on that evidence I would have concluded that there had been no passing off by TLL, see Reed Executive plc v Reed Business Information Ltd [2004] RPC 40, at [111] and Phones 4U Ltd v Phone4U.co.uk.Internet Ltd [2007] RPC 5, at [16].

Identicality or similarity of the marks and signs

[47]Because it made no practical difference, counsel did not explore whether the roundel signs and the M logo signs used by TLL were identical or similar to, respectively, the Roundel and the M Logo trade marks. Both the trade marks were registered in relation to services identical to those provided by TLL (see above). To my eye, in each case the roundel sign used by TLL was identical to the Roundel as registered by BMW. It is hard to tell from the print of TLL’s earlier website in the evidence whether the M logo sign used on that website was identical to the M Logo as registered, but I am prepared to assume that it was. The M logo sign on TLL’s later website was similar to the M Logo as registered.

Conclusion

[48]I conclude:(1) The Roundel was infringed by TLL pursuant to art.9(1)(a) and 9(1)(c) of the Trade Mark Regulation by reason of the pleaded uses of its roundel sign complained of by BMW.(2) The M Logo was infringed pursuant to art.9(1)(a) by reason of TLL’s use of the M logo sign on its earlier website and pursuant to art.9(1)(b) by reason of the use of the M logo sign on its later website.(3) The BMW Mark was not infringed by TLL.(4) TLL has no defence to its infringements pursuant to art.12(b) or (c).(5) TLL is liable for passing off in relation to its use of its roundel sign and its M logo signs.(6) Mr Agyeton is jointly liable with TLL for its acts of infringement of two of the Trade Marks and for passing off.