Bayerische Motoren Werke Aktiengesellschaft (BMW) v Round And Metal Ltd & Anor

Bayerische Motoren Werke Aktiengesellschaft (BMW) v Round And Metal Ltd & Anor

The defendants infringed BMW's Community Registered Designs because Article 110(1) did not apply: the alloy wheels were not 'must match' parts dependent on the appearance of the car, were not normally used for repair to restore the original appearance, and were mainly used for upgrades. The defendants also infringed BMW's Community Trade Marks by supplying logo stickers and using the marks in eBay listings, as these acts were likely to cause confusion as to origin and were not protected by any defence. Mr Gross was jointly liable. The counterclaims failed as BMW succeeded in its claims.

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) / Judgment After Trial
Outcome
Claim allowed; counterclaims dismissed
Legal Topics
Community Registered Designs, Community Trade Marks, Designs Directive, Passing Off, TRIPS Agreement
Intellectual Property Community Registered Designs Community Trade Marks Designs Directive Passing Off TRIPS Agreement

Case Brief

Summary, issues, holding and outcome

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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) / Judgment After Trial

Legal Issues

  1. 1 Whether the defendants infringed BMW's Community Registered Designs by importing and selling replica alloy wheels
  2. 2 Whether the defendants infringed BMW's Community Trade Marks by supplying logo stickers and using marks in eBay listings
  3. 3 Interpretation of Article 110(1) of the Community Designs Regulation and its application to the facts

Ratio Decidendi

The defendants infringed BMW's Community Registered Designs because Article 110(1) did not apply: the alloy wheels were not 'must match' parts dependent on the appearance of the car, were not normally used for repair to restore the original appearance, and were mainly used for upgrades. The defendants also infringed BMW's Community Trade Marks by supplying logo stickers and using the marks in eBay listings, as these acts were likely to cause confusion as to origin and were not protected by any defence. Mr Gross was jointly liable. The counterclaims failed as BMW succeeded in its claims.

Court Disposition

Claim allowed; counterclaims dismissed

Orders

  • Declaration of infringement of Community Registered Designs
  • Declaration of infringement of Community Trade Marks