Bayerische Motoren Werke Aktiengesellschaft (BMW) v Round And Metal Ltd & Anor [2012] EWHC 2099 (Pat) (27 July 2012)

Bayerische Motoren Werke Aktiengesellschaft (BMW) v Round And Metal Ltd & Anor [2012] EWHC 2099 (Pat) (27 July 2012)

Article 110(1) of Council Regulation 6/2002/EC only applies to component parts whose design is dependent on the appearance of the complex product and used for repair to restore its original appearance. The burden of proof for this exception lies with the defendant. In this case, the defendants failed to establish that their acts fell within Article 110(1), and thus infringed BMW's Community Registered Designs. The court also found infringement of BMW's Community Trade Marks and passing off.

Citation
[2012] EWHC 2099 (Pat)
Parties
Claimant: Bayerische Motoren Werke Aktiengesellschaft; First Defendant: Round and Metal Limited; Second Defendant: Philip David Gross
Jurisdiction
England and Wales
Judgment Date
27 July 2012
Procedural Posture
Intellectual Property (designs and Trade Marks) Infringement / First Instance Judgment
Outcome
Claim allowed; counterclaims dismissed
Legal Topics
Community Registered Designs, Community Trade Marks, Passing Off, Interpretation of Article 110(1) Council Regulation 6/2002/ec, Burden of Proof in Design Infringement, Spare Parts Exception ('must Match')
Intellectual Property Law Community Registered Designs Community Trade Marks Passing Off Interpretation of Article 110(1) Council Regulation 6/2002/ec Burden of Proof in Design Infringement Spare Parts Exception ('must Match')

Case Brief

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Parties

Bayerische Motoren Werke Aktiengesellschaft

Claimant

Round and Metal Limited

First Defendant

Philip David Gross

Second Defendant

Procedural Posture

Intellectual Property (designs and Trade Marks) Infringement / First Instance Judgment

Legal Issues

  1. 1 Whether the defendants infringed BMW's Community Registered Designs by importing and selling replica alloy wheels
  2. 2 Whether Article 110(1) of Council Regulation 6/2002/EC provides a defence to infringement for spare parts used for repair
  3. 3 Whether the defendants infringed BMW's Community Trade Marks

Ratio Decidendi

Article 110(1) of Council Regulation 6/2002/EC only applies to component parts whose design is dependent on the appearance of the complex product and used for repair to restore its original appearance. The burden of proof for this exception lies with the defendant. In this case, the defendants failed to establish that their acts fell within Article 110(1), and thus infringed BMW's Community Registered Designs. The court also found infringement of BMW's Community Trade Marks and passing off.

Court Disposition

Claim allowed; counterclaims dismissed

Orders

  • Declaration of infringement of BMW's Community Registered Designs
  • Declaration of infringement of BMW's Community Trade Marks