Bayerische Motoren Werke Aktiengesellschaft v Edward Ronayne (t/a Bmwcare)

• Jurisdiction: Ireland
• Judge: Mr. Justice Ryan
• Judgment Date: 08 April 2014
• Neutral Citation: [2014] IEHC 210
• Judgment citation (vLex): [2014] 4 JIC 0805
• Court: High Court
• Date: 08 April 2014

[2014] IEHC 210

THE HIGH COURT

[No. 11125 P./2010]

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

No Redaction Needed

BETWEEN

BAYERISCHE MOTOREN WERKE AKTIENGESELLSCHAFT

PLAINTIFF

AND

EDWARD RONAYNE (T/A BMWCARE)

DEFENDANT

FLOGAS IRL LTD v TRU-GAS LTD & ANOR UNREP COOKE 16.5.2013 (EX TEMPORE) [TRANSCRIPT NOT AVAILABLE]

DRAPER v TRIST 1939 3 AER 513 1939 56 RPC 225

TRADE MARKS ACT 1996 S14(3)

EEC REG 40/1994 ART 9(1)(C)

CONWAY v IRISH NATIONAL TEACHERS ORGANISATION (INTO) 1991 2 IR 305 1991 ILRM 497

32RED PLC v WHG (INTL) & ORS 2013 AER (D) 93 (APR) 2013 EWHC 815 (CH)

WATSON LAIDLAW & CO LTD v POTT CASSELS & WILLIAMSON (A FIRM) 1914 1 SLT 1914 31 RPC 104 130 1914 SC (HL) 18

FALCON TRAVEL LTD v OWNERS ABROAD GROUP PLC T/A FALCON LEISURE GROUP 1991 1 IR 175 1991 ILT 148 1990/7/1843

TOMMY HILFIGER EUROPE INC & ORS v MCGARRY (T/A LIFEJACKET) & ORS 2009 1 ILRM 161 2008/60/12479 2008 IESC 36

RETAIL SYSTEMS TECHNOLOGY LTD v MCGUIRE & KELLY & MCGUIRE LTD 2008 1 IR 541 2007/53/11346 2007 IEHC 13

PORSCHE AG v PORSCHE SPECIALIST VAN DEN BERG APELDOORN BV 2013 334946/HA ZA 09-1190

BAYERISCHE MOTORENWERKE AG (BMW) v DEENIK 1999 AER (EC) 235 1999 1 CMLR 1099 1999 ECR I-905 CASE C-63/97

Intellectual Property – Trademark infringement – Passing off – Plaintiff seeking injunctive relief, damages and costs for infringement of trademark – Whether aggravated damages are appropriate in light of defendant”s conduct

Facts: The defendant, Mr Ronayne, carried out commercial activity using the trading name “BMWCare”. In a 2013 High Court judgment it was held that the plaintiff, BMW, was entitled to injunctions restraining the defendant from using the plaintiff”s name or incorporating the name in connection with his business. The plaintiff then sought damages (including aggravated damages), costs, and injunctive relief arising out of the decision of the Court. The plaintiff submitted that the Court should consider, when estimating damages, that the defendant 'piggy backed' on the plaintiff's trademarks, that the defendant interfered with the plaintiff's right to control its intellectual property rights in Ireland, that the defendant's business benefited from the plaintiff's branding and the association with its trademarks, that the defendant cannot plead a defence of ignorance because proof of the infringement alone entitles the plaintiff to damages, and that the duration of the infringement should be taken into account. The plaintiff submitted that where a court has found infringement of a mark with a reputation pursuant to s.14(3) of the Trade Marks Act 1996, additional compensation should be awarded to allow for damages caused by marketplace confusion. The defendant submitted that the plaintiff had not established entitlement to damages because the defendant operated a small garage which was not even registered for VAT, BMW gave evidence that their profits increased during the contentious period, the plaintiff produced no evidence to show they had suffered any loss, and the plaintiff did not adduce any evidence of the cost of licensing its trademark outside a franchising or dealership arrangement.

Held by Ryan J that it is unnecessary to show that infringement occurred fraudulently, referring to Draper v Trist and others [1939] All E.R. 513. Having considered Tommy Hilfiger Europe Inc and another v McGarry (t/a Lifejacket) [2008] IESC 36, Ryan J held that for trademark infringement and passing off, aggravated damages are only to be awarded to compensate for additional harm suffered by a plaintiff; Ryan J considered damages to be compensatory of the plaintiff, not punitive of the defendant, with the measurement being the plaintiff”s loss. Ryan J held that BMW has not proved actual loss and that there was no evidence of illicit gains made by Mr Ronayne. Ryan J then considered the general loss of reputation that BMW may have suffered by being associated with the defendant”s commercial activity. Ryan J held it impossible to measure such actual or potential loss and so a rough estimate may be employed.

Ryan J held that the justice of the situation is met by giving judgment for a sum to reflect the element of personal injury to the plaintiff”s proprietary rights and accordingly awarded €10,000. The High Court held that aggravated damages are not appropriate in light of its findings as to the conduct of the defendant and the general circumstances of the case.

Judgment approved.

1 Judgment of Mr. Justice Ryan delivered on the 8th April, 2014

1. Background and Issues

2 In a judgment I delivered on the 19 ^th December, 2013, I held that the plaintiff was entitled to injunctions restraining the defendant from using the plaintiff's name or incorporating the name in connection with his business. The plaintiff now seeks damages, including aggravated damages, and costs in addition to injunctive relief arising out of the decision of the Court. This decision should be read with the previous judgment on infringement of patents and passing off.

3 In the main action, the Court heard evidence of the network of BMW dealers and authorised service agents operating in Ireland and the rules under which they must operate in using the plaintiff's marks. The company assiduously protects its marks, brand and reputation and these precautions are put in place to ensure that BMW is represented properly and portrayed in the right way in line with their policies.

4 BMW has not alleged any loss or diminution in its trade. It did not claim that it had to change its business model to compete with the defendant or as a result of his affected by the work being carried out by the defendant at his premises in Cloonfad. While the plaintiff did change the branding of its 'Original BMW Care Products Natural Care' range, there was no allegation that this was done as a result of any commercial activity involving the defendant. Despite the use of the trading name 'BMWCare' by the defendant there is no evidence which suggests that there was any consumer confusion.

2. Submissions

5 The plaintiff submits that the court should take the following facts into consideration when estimating damages:-

6 (i) That the defendant 'piggy backed' on the plaintiff's trademarks;

7 (ii) The defendant interfered with the plaintiff's right to control its intellectual property rights in Ireland;

8 (iii) The defendant's business benefited from the plaintiff's branding and the association with its trademarks;

9 (iv) The defendant cannot plead a defence of ignorance because proof of the infringement alone entitles the plaintiff to damages;

10 (v) The duration of the infringement should be taken into account.

11 In Flogas Ireland Ltd v. Tru-Gas Ltd & Anor (Unreported, High Court, 16 ^th May 2013), Cooke J. awarded €75,000 in general damages on the basis that the infringing activities continued for almost a year and, in the joined case involving Langan Fuels Limited, Cooke J. awarded €25,000 as the damage was more localised and short lived.

12 In claiming damages for infringement, it is unnecessary to show that the infringement occurred fraudulently. In Draper v. Trist and others [1939] All E.R. 513, Sir Wilfred Greene M.R. said at p. 518:-

"The defendant in a passing-off action has, in the normal case, the simple case, sold a quantity of deceptive goods. That is the very gist of passing off."

13 Greene M.R. went on to note that it would be an impossible task when assessing the quantum of damages to expect the plaintiff to be able to provide evidence that each individual consumer was deceived by the passing-off actions of the defendant. Likewise, it would be equally difficult for a defendant to prove that each consumer was not in fact deceived by his product. He said, at p. 519:-

"The real problem is when all the facts are considered and all the considerations on either side are given fair weight, the proper sum at which to estimate the plaintiff's damage."

14 Goddard L.J. in the same case likened damages in passing off to libel and referred to the case of Leather Cloth Co. v. Hirschfield L.R. 1 Eq. 299 where, despite a claim for damages, no award was made, not even for nominal damages, and said that this decision was:-

"....[C]ontrary to the decisions at law, which say that, if passing off is established, some damages must at any rate be given."

15 The plaintiff also seeks aggravated damages, submitting that where a court has found...