Bayerische Moteren Werke Aktiengesellschaft v Edward Ronayne t/a BMWcare)

• Jurisdiction: Ireland
• Judge: Mr Justice Ryan
• Judgment Date: 19 December 2013
• Neutral Citation: [2013] IEHC 612
• Court: High Court
• Docket Number: [2010 No. 11125 P]
• Date: 19 December 2013

[2013] IEHC 612

THE HIGH COURT

[No. 11125 P./2010]

Bayerische Moteren Werke Aktiengesellschaft v Ronayne (t/a BMWCare)

BETWEEN

BAYERISCHE MOTEREN WERKE AKTIENGESELLSCHAFT

PLAINTIFF

AND

EDWARD RONAYNE (TRADING AS BMWCARE)

DEFENDANT

BAYERISCHE MOTORENWERKE AG & ANOR v DEENIK 1999 AER (EC) 235 1999 ECR I-905 1999 1 CMLR 1099 1999 ETMR 339

TRADE MARKS ACT 1996 S18

EEC REG 207/2009 ART 102

TRADE MARKS ACT 1996 S15(2)

EEC REG 207/2009 ART 7(1)

TRADE MARKS ACT 1996 S14

TRADE MARKS ACT 1996 S14(1)

TRADE MARKS ACT 1996 S14(2)

TRADE MARKS ACT 1996 S14(3)

TRADE MARKS ACT 1996 S61(2)

DR ING HCF PORSCHE AG v PORSCHE SPECIALIST BV UNREP COURT OF APPEAL OF THE HAGUE 15.1.2013 (CASE NO 200.098.670/01)

IG COMMUNICATIONS LTD v OFFICE FOR THE HARMONISATION IN THE INTERNAL MARKET (TRADE MARKS & DESIGNS) (OHIM) 2013 ETMR 17

ALLERGAN INC & ALLERGAN PHARMACEUTICALS (IRL) LTD v OCEAN HEALTHCARE LTD UNREP 24.6.2008 2008/2/312 2008 IEHC 189

VOLKSWAGEN TRADE MARK, IN RE 2012 ETMR 18

IN NEWMAN LTD v ADLEM 2006 FSR 16 2005 EWCA CIV 741

CANON KABUSHIKI KAISHA v METRO-GOLDWYN-MAYER INC 1998 AER (EC) 934 1998 ECR I-5507 1999 1 CMLR 77 1999 ETMR 1 1999 FSR 332 1999 RPC 117

TOYOTA MOTOR SALES USA v TABARI INC v TABARI T/A FAST IMPORTS 610 F 3D 1171

HABIB BANK LTD v HABIB BANK AG ZURICH 1981 1 WLR 1265 1981 2 AER 650 1982 RPC 1

SOCIETE ANONYME DES BAINS DE MER ET DU CERCLE DES ETRANGERS A MONACO v ANGLOFILE INTERNATIONAL LTD (T/A MONTE CARLO CASINO ENTERTAINMENT) 2014 ETMR 9 2013 EWPCC 38

EEC DIR 2008/95 ART 5(1)(A)

SPECSAVERS INTERNATIONAL HEALTHCARE LTD v ASDA STORES LTD 2012 ETMR 17 2012 FSR 19 2012 EWCA CIV 24

TRADE MARKS ACT 1996 S15

EEC DIR 2008/95 ART 6(2)

TRADE MARKS ACT 1996 S8

TREATY OF ROME 25.3.1957 ART 177

EEC DIR 2008/95 ART 5

EEC DIR 2008/95 ART 7

EEC DIR 2008/95 ART 6

EEC DIR 2008/95 ART 6(1)(C)

ANHEUSER-BUSCH INC v BUDEJOVICKY BUDVAR NARODNI PODNIK 2005 ETMR 27 2004 ECR I-10989

CELINE SARL v CELINE SA 2007 ETMR 80 2007 ECR I-7041

EEC DIR 2008/95 ART 5(1)

TRADE MARKS ACT 1996 S14(2)(B)

EEC DIR 2008/95 ART 5(1)(B)

OCH-ZIFF MANAGEMENT EUROPE LTD & ANOR v OCH CAPITAL LLP & ORS 2011 BUS LR 632 2011 ECC 5 2011 ETMR 1 2011 FSR 11 2010 EWHC 2599 (CH)

L'OREAL SA & ORS v BELLURE NV & ORS 2010 AER (EC) 28 2010 BUS LR 303 2009 ECR I-5185 2009 ETMR 55 2010 RPC 1

RECKITT & COLMAN PRODUCTS LTD v BORDEN INC & ORS (NO 3) 1990 1 WLR 491 1990 1 AER 873 1990 RPC 341

Intellectual Property - Trade Mark law - Practice and procedure - Passing-off - Confusion - Injunction Trade Marks Act 1996, as amended - Article 102 Council Regulation 207/2009

Facts: The defendant had a garage premises and had employed the name "BMWcare" in his email address in late 2005 and later registered "BMWcare" as a business name. The plaintiff claimed that the defendant was engaging in confusing and parasitic use of BMW"s name, trademarks and devices and sought inter alia an Order pursuant to s. 18 Trade Marks Act 1996, as amended or Article 102 Council Regulation 207/2009 restraining the defendant from infringing the plaintiff"s Trade Mark. The defendant pleaded that the plaintiff was estopped from bring proceedings by reason of acquiescence in his use of the name "BMWcare".

Held by Ryan J. that it was unnecessary for the plaintiff to prove actual confusion. Likely confusion was sufficient. This was not a case where there had been long use without confusion. The plaintiff had demonstrated the three elements necessary to establish that the defendant had been engaged in passing off his services as those of the plaintiff by the use of his website. His activities were not authorized by any judgments of the Court of Justice.

1 Judgment of Mr Justice Ryan delivered the 19th December, 2013

2 This is a claim for infringement of trade marks and passing off. The plaintiff BMW needs little identification or introduction. It is a worldwide company with enormous brand recognition. As one would expect, it has many trade marks that are recognised internationally and specifically are European Community Trade Marks or CTM. There is a family of BMW trade marks that includes the plaintiff's name as appears in the title of this action, the letters BMW and a host of associated brands or names. For the purposes of this action, it is sufficient to note the following CTMs:

3 The BMW roundel logo;

4 BMW;

5 ORIGINAL BMW CARE PRODUCTS NATURAL CARE;

6 The plaintiff's business is carried on in Ireland through a network of authorised dealers and service/repair agents. BMW exercises strict control over the operations of these sales and service facilities, which includes approval and supervision of premises, equipment, training of staff, advertising and marketing.

7 The defendant has a garage premises in the west of Ireland. He is an expert mechanic and an admirer of BMW cars. He decided to specialise in them in his business. He began to use the name "BMWcare" in his email address in late 2005. He purchased the internet domain name "BMWcare.com" and with the assistance of a web designer assembled a website or web page, which went live in late 2006. Mr Ronayne also registered BMWcare as a business name, a step that did not involve evaluation of his entitlement to use the name.

8 The defendant said that his plan was to ensure that people did not think he was connected to BMW. He did so by always saying he was independent. The website includes phrases like; "Independent advice and assessment"; "We are proud to be independent" and "Beholden to no one". His understanding was that the Deenik judgment of the ECJ [BMW and BMW Nederland VDeenik23 February 1999; Case C-63/97] which he had studied carefully authorised the content of his site and his business stationery. He had indeed gone further than was necessary in distancing himself from BMW by emphasising the independence of his business.

9 The web page originally contained the BMW roundel logo at the top but Mr Ronayne removed it in September, 2013 and no longer maintained that he was entitled to use it.

10 The plaintiff claims that the defendant's use of the name and/or brand BMWcare or some variant thereof as used on his website and business stationery and generally in connection with his business constitutes infringement of its trade marks in multiple breaches of the Trade Marks Act, 1996 and the tort of passing off. The defendant denies these claims and argues that his use of the name is legitimate under the legislation and the jurisprudence of the European Court of Justice.

11 The Plaintiff complains about the defendant's conduct in regard to: registration and use of domain names; registration and use of his business name; use of the BMW roundel; the form, content and use of his website; putting on his site a hyperlink to plaintiff's website; use of metatags (an indexing method for websites used by search engines to deliver targeted search results by checking key words); and use generally of the name BMW care or some variant thereof.

12 In respect of the plaintiff's CTM: ORIGINAL BMW CARE PRODUCTS NATURAL CARE the defendant pleads that it is not entitled to registration and should be declared invalid because it is merely descriptive.

13 In January 2012 Murphy J made in order allowing amendment to the statement of claim to remove references to another of the plaintiff's trade marks "BMW Fair Care" and that is no longer in issue.

The Proceedings

14 In the Plenary Summons the plaintiff claims:-

15 1. An Order pursuant to s. 18 of Trade Marks Act, 1996 (as amended) or Article 102 of Council Regulation 207/2009 restraining the defendant from infringing the plaintiff's CTMs.

16 2. An Order directing the defendant to cease from passing off business and/or services connected with the plaintiff.

17 3. An Order transferring, at no cost to the plaintiff, the domain names complained of.

18 4. An Order directing the defendant to cease using the intellectual property of the plaintiff when conducting his business.

19 5. An Order directing the defendant not to register any company including the mark 'BMW'.

20 6. An Order that the defendant cancel or remove name BMW care.

21 7. An Order that the defendant immediately deliver up and destroy all stationery, promotional materials and other materials bearing the BMW TM.

22 8. Damages including aggravated and/or exemplary for infringement of CTM.

23 9. Damages for passing off plaintiff s business and/or services

24 10. Damages for conspiracy by the defendant to intentionally interfere with the economic interests of the plaintiff.

25 11. In the alternative, at the plaintiff's option, an account of profits of the defendant.

26 12. Interest, further relief and costs.

The Statement of Claim

27 The plaintiff claims that the defendant is engaged in confusing and parasitic use of BMW's name, trade marks and devices on the defendant's website, stationery and business cards and materials which takes unlawful advantage thereof. The defendant has infringed the plaintiff's trade marks and is passing off his business as being associated with the plaintiff's.

28 The plaintiff seeks a range of reliefs including orders restraining the defendant or his servants or agents from using the roundel device and word mark, restraining passing off, restraining use of any of the plaintiff's intellectual property, preventing use of a domain name or business name with BMW and directing the handing over of offending materials in the defendant's possession, in addition to damages under various headings.

29 The plaintiff says that it has no objection to the defendant referring to BMW in the course of his business as long as it is done in a legally permissible way. The plaintiff believes that unless the defendant is restrained, the unlawful conduct will continue. The plaintiff suffered loss, damage,...