Bayerische Motoren Werke Aktiengesellschaft v Commercial Autoglass (Pty) Ltd (5889/2005) [2006] ZAGPHC 125; 2006 BIP 144 (T) (17 March 2006)

/SG

IN THE HIGH COURT OF SOUTH AFRICA

(TRANSVAAL PROVINCIAL DIVISION)

DATE: 17/03/2006

CASE NO: 5889/2005

UNREPORTABLE

In the matter between:

BAYERISCHE

MOTOREN WERKE

AKTIENGESELLSCHAFT APPLICANT

And

COMMERCIAL AUTO GLASS (PTY) LTD RESPONDENT

JUDGMENT

PRINSLOO, J

[1] The applicant is the developer and, by itself and through licensees, the manufacturer and distributor of BMW vehicles, their parts, components and accessories and related products throughout many countries of the world, including South Africa.

[2] The applicant is the proprietor of the registered trade marks BMW, BM and 3-SERIES (“the applicant’s trade marks”).

[3] The applicant also claims rights in the unregistered trade marks E30, E36 and E46.

[4] The respondent’s business includes the distribution and sale of windscreens for motor vehicles, including those to fit BMW vehicles. The respondent is also involved in the supply and fitment of all accessories and spare parts for all types of motor vehicles, including the various models of BMW motor vehicles manufactured by the applicant.

[5] In conducting its business, as described, the respondent, in its advertising, and in relation to the goods sold by it, makes use of the registered and unregistered trade marks of the applicant.

[6] Believing that the aforementioned conduct of the respondent is unlawful, the applicant instituted these proceedings.

[7] The application is based on respondent’s alleged infringement of the applicant’s well-known registered and/ or unregistered trade marks, including the trade marks BMW, BM, 3-SERIES, E30, E36 and E46 in terms of the Trade Marks Act 194 of 1993 (“the act”) and passing off.

[8] Before me Mr Michau appeared for the applicant and Mr Wheeldon appeared for the respondent.

[9] In its notice of motion the applicant seeks an order restraining the respondent from infringing the rights of the applicant in any of its trade mark registration numbers 1979/06501 BMW in class 12, 1998/17028 BM in class 12 and/or 1984/01620 3-SERIES in class 12 in terms of the provisions of section 34(1)(a) and/or 34(1)(b) of the act, by making unauthorised use in the course of trade of any of the aforementioned trade marks, or of any confusingly or deceptively similar trade marks, in any of the manners referred to in the founding affidavit, or otherwise in relation to windscreens and/or windows and/or other parts and/or accessories for motor vehicles.

[10] Moreover, the applicant seeks an order restraining the respondent from infringing the rights of the applicant in terms of section 35 of the act in relation to any of its well-known (unregistered) trade marks BMW, BM, 3-SERIES, E30, E36 and/or E46 by making unauthorised use of any reproductions, limitations or translations of any of the aforesaid trade marks in relation to any of the manners referred to in the founding affidavit, or otherwise in relation to windscreens and/or windows and/or other parts and/or accessories for motor vehicles.

[11] There is a further prayer for relief based on passing-off which will only come into play if the applicant is unsuccessful in its bid for the relief based on sections 34 and 35 of the act.

[12] Lastly the applicant seeks an order directing the respondent to remove from all its advertisements, promotional material, invoices, labelling, websites, data bases, records or any other printed or visual matter all unauthorised reference to any of the aforesaid trade marks, or any trade marks confusingly or deceptively similar thereto.

[13] Initially, the applicant, in its notice of motion, limited the relief claimed to the respondent’s alleged infringing conduct “in relation to windscreens or windows for motor vehicles”. The applicant’s case in the founding affidavit is limited to alleged infringement in respect of these accessories, ie windscreens and windows.

As a result of a remark made in the opposing affidavit, the applicant, at a late stage, amended the notice of motion to add to the windscreens and windows the phrase, “and/or other parts and/or accessories for motors”.

No alleged use or infringement in relation to the latter category is pleaded by the applicant and none is illustrated in any attachment, nor admitted by the respondent in real terms. The amended claim for additional relief extending to such last-mentioned goods is therefore unsupported by evidence and, in my view, it cannot be entertained, because no case in support thereof is made out in the founding papers.

[14] As to the defences offered by the respondent, it deserves mentioning that the respondent does not deny the existence of the applicant’s registered trade mark rights, supra and the respondent also agrees that the applicant’s (unregistered) trade marks E30, E36 and E46 are used in the relevant trade for purposes of identifying and distinguishing between the various types of BMW motor vehicles and the spare parts and accessories required for each, as well as for purposes of avoiding confusion in the market place between the different models and ensuring that the correct spare parts for a specific model is supplied and fitted.

[15] However, the respondent denies that the applicant’s unregistered trade marks can constitute trade marks.

[16] In addition, the respondent relies on the defence set out in section 34(2)(c) of the act and claims that the use of these models, codes and trade marks is the only practical and effective manner of referring to and distinguishing between the various BMW motor vehicles (models) for purposes of replacing the various parts of the models.

[17] The relevant portions of section 34(1) of the act read as follows:

“34(1) The rights acquired by registration of a trade mark shall be infringed by –

(a) the unauthorised use in the course of trade in relation to goods or services in respect of which the trade mark is registered, of an identical mark or of a mark so nearly resembling it as to be likely to deceive or cause confusion;

(b) the unauthorised use of a mark which is identical or similar to the trade mark registered, in the course of trade in relation to goods or services which are so similar to the goods or services in respect of which the trade mark is registered, that in such use there exists the likelihood of deception or confusion.”

[18] Section 34(2) of the act reads as follows:

“Section 34(2): Defences to trade mark infringement:

(2) A registered trade mark is not infringed by –

...

(c) the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories, and such services;

Provided further that the use contemplated in paragraph (a), (b) or (c) is consistent with fair practice.”

[19] Section 35 of the act deals with protection for well-known trade marks under the Paris Convention although such marks may not be registered in a country where protection is claimed. Section 35(3) reads as follows:

“(3) The proprietor of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark is entitled to restrain the use in the Republic of a trade mark which constitutes, or the essential part of which constitutes, a reproduction, imitation or translation of the well-known trade mark in relation to goods or services which are identical or similar to the goods or services in respect of which the trade mark is well-known and where the use is likely to cause deception or confusion.”

[20] All the aforesaid registered trade marks of the applicant are registered, in general, in class 12, in relation to motor vehicles and parts and/or accessories and/or fittings therefore. The applicant relies on the fact that its registered trade marks have become well-known for purposes of the relief sought in terms of the act, and, in addition, the applicant relies on the fact that it has acquired a goodwill and reputation in its registered trade marks for purposes of the relief sought in terms of the common law for passing-off.

[21] As to the well-known trade marks (section 35 protection) the applicant is also the proprietor of the trade marks E30, E36 and E46, which are used as model designations in buying and selling BMW cars and components. These marks are hereinafter collectively referred to as “the applicant’s unregistered trade marks” or “E-marks”.

[22] It is not in dispute that the applicant has made extensive use of its trade marks, both registered and unregistered, in South Africa in relation to the motor vehicles manufactured by it, as well as parts and accessories therefore. It is generally recognised, and has been accepted in this court in respect of other similar matters, that these trade marks have become well-known for purposes of this type of relief sought.

[23] The relief sought by the applicant in terms of section 35 of the act relates to its registered and unregistered trade marks. The applicant has undeniably made extensive use of its registered and unregistered trade marks in South Africa. The sales are enormous, the applicant has expended a great deal of time and money towards promoting the trade marks and the sales and advertising figures are not in dispute. There is undisputed proof that the applicant’s unregistered trade marks are widely recognised and exclusively connected with the applicant. The substantial reputation and goodwill acquired by the applicant in its trade marks (registered and unregistered) is beyond question. Ample support for all these observations which I have made is to be found in supporting affidavits and other annexures forming part of the founding papers.

[24] It has to be accepted, in my view, that the applicant’s trade marks have become well-known in South Africa, as contemplated in section 35(1A) of the act. Against this background, I must first consider the contention of the respondent that the applicant’s unregistered trade marks cannot constitute trade marks and are not capable of distinguishing and functioning as trade marks.

The respondent admits that the applicant’s unregistered trade marks are understood in the trade to indicate and differentiate between the different models of the applicant’s BMW 3 SERIES motor vehicles. Moreover, the respondent admits that the applicant’s unregistered trade marks are widely used by all sectors of the relevant trade to identify and refer to the specific models of BMW motor vehicles and the particular spare parts and accessories used in relation to these motor vehicles.

It appears that the main thrust of the respondent’s contention is that the unregistered trade marks (the E-marks) cannot serve the purpose of a trade mark. The reasons advanced by the respondent for this contention are that the E-marks are never actually placed on the applicant’s BMW motor vehicles and are always used in combination with the applicant’s trade mark BMW. Consequently, so it is argued, the E-marks, if used independently without reference to the BMW trade mark, would not be capable of distinguishing the applicant’s motor vehicles from those of others in the relevant trade.

Section 2 of the act dictates that in order for a mark to qualify as a trade mark, it must be capable to distinguish the goods of one party from that of another.

In this instance, there is clear evidence that the E marks are widely accepted and recognised as distinguishing between the different models of BMW motor vehicles. In my view, it also distinguishes the vehicles from vehicles of other manufacturers. The evidence clearly suggests that the E marks serve a distinguishing purpose. The evidence filed by the applicant indicates that the E marks (on their own) are recognised by members of the relevant sector of the public as indicative of the various models of the BMW vehicles.

In the result, I have come to the conclusion that the respondent's argument in this regard must fail. In fact, if the E marks did not serve the purpose of distinguishing, there would be no reason for the respondent to make use of these marks, as will be illustrated hereunder.

[25] Before turning to the remaining defence, namely that dealing with section 34(2) of the act, I pause to mention what turned out to be no more than a superficial dispute and something which did not receive a great deal of attention during the hearing. It deals with the question whether the goods offered for sale and sold by the respondent fall within the scope of the trade mark registrations of the applicant. In the founding affidavit the following allegation is made:

"I am advised that windscreens or windshields for vehicles are classified within class 12 of the International Classification of Goods and Services (Nice Classification) which is relevant for purposes of regulation 4 of the Trade Mark Regulations. In other words, the aforementioned goods being offered for sale and sold by the respondent fall within the scope of the trade mark registrations of the applicant set out above and in relation to which these trade marks are well-known."

This allegation was not denied in the answering affidavit, neither was it seriously attacked during argument before me. It also appears to me that the goods fall inside the ambit of the classification. I consequently hold this to be the case for present purposes.

[26] The question whether the rights of the applicant have been infringed by the respondent either in terms of section 34 or section 35 of the act, ought to be considered against the background of the conduct of the respondent which triggered this application in the first place.

[27] The respondent's business is the distribution and sale of windscreens for motor vehicles as well as the supply and fitment of windscreens and automotive glass and other spare parts for all types of motor vehicles, including the various models of BMW motor vehicles.

[28] In its advertisements, promotional material, invoices and product labelling in the conduct of its trade, the respondent is making use of and reference to the trade marks BMW, BM, 3-SERIES, E30, E36 and E46 in relation to the windscreens and/or automotive glass sold by it.

[29] Clear examples of the advertisements, promotional material, invoices and product labelling employed by the respondent are to be found as annexures to the founding papers. An example of an advertisement under “car windscreens” reads as follows:

“BMW

BMW E30 3-SERIES 83-92 R355

BMW E36 3-SERIES 91-97 R460

BMW E46 3-SERIES 98 on R490”

There is a tax invoice inscribed “BMW E36 2DR 92-97 WS”

There is a windscreen labelled “BM-E36 C” and a quotation for a “BMW E36 front screen”. These are some of the examples. The fact that this material is generated by the respondent is not disputed in any way.

[30] The conduct complained of by the applicant is described in para 10 of the founding affidavit and I deem it convenient to quote three extracts:

“10.7 The windscreen purchased (which is tendered for inspection to the respondent or its attorneys ... by arrangement during normal business hours) is not made by or with the authority or licence of the applicant or BMW SA. In this regard I refer to the accompanying affidavit of Mr Salomon Maritz, a Parts expert in the employ of BMW SA.

10.8 Accordingly, I am advised that the conduct of the respondent in this regard amounts to an infringement of the rights of the applicant in terms of sections 34(1)(a) and/or (b) and section 35 of the Trade Marks Act.