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

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

The court found that the applicant's registered and unregistered trade marks, including BMW, BM, 3-SERIES, E30, E36, and E46, are well-known in South Africa and serve to distinguish BMW vehicles and related parts from those of other manufacturers. The respondent's use of these marks in advertising, invoices, and product labelling for windscreens and accessories was unauthorised and not bona fide, as it went beyond merely indicating the intended purpose of the goods and was likely to cause confusion or deception in the market. The respondent's defence under section 34(2)(c) failed because its use was not consistent with fair practice and was not limited to descriptive reference. The...

Citation
[2006] ZAGPHC 125
Parties
Applicant: Bayerische Motoren Werke Aktiengesellschaft; Respondent: Commercial Autoglass (Pty) Ltd
Court
High Courts - Gauteng
Jurisdiction
South Africa
Judgment Date
17 March 2006
Case Number
5889/2005
Procedural Posture
Civil Application / First Instance
Outcome
Application granted in part; respondent restrained from infringing applicant's trade marks in relation to windscreens and windows for BMW vehicles.
Judges
Prinsloo
Legal Topics
Trade Mark Infringement, Passing Off, Well Known Marks, Bona Fide Use Defence, Nice Classification, Advertising and Labelling
Intellectual Property Commercial and Corporate Trade Mark Infringement Passing Off Well Known Marks Bona Fide Use Defence Nice Classification Advertising and Labelling

Case Brief

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Parties

Bayerische Motoren Werke Aktiengesellschaft

Applicant

Commercial Autoglass (Pty) Ltd

Respondent

Procedural Posture

Civil Application / First Instance

Legal Issues

  1. 1 Whether the respondent's use of the applicant's registered and unregistered trade marks constitutes infringement under the Trade Marks Act.
  2. 2 Whether the applicant's unregistered trade marks E30, E36, and E46 qualify for protection as trade marks.
  3. 3 Whether the respondent's use falls within the bona fide use defence under section 34(2)(c) of the Trade Marks Act.

Ratio Decidendi

The court found that the applicant's registered and unregistered trade marks, including BMW, BM, 3-SERIES, E30, E36, and E46, are well-known in South Africa and serve to distinguish BMW vehicles and related parts from those of other manufacturers. The respondent's use of these marks in advertising, invoices, and product labelling for windscreens and accessories was unauthorised and not bona fide, as it went beyond merely indicating the intended purpose of the goods and was likely to cause confusion or deception in the market. The respondent's defence under section 34(2)(c) failed because its use was not consistent with fair practice and was not limited to descriptive reference. The...

Court Disposition

Application granted in part; respondent restrained from infringing applicant's trade marks in relation to windscreens and windows for BMW vehicles.

Orders

  • The respondent is restrained from infringing the applicant's rights in trade mark registration numbers 1979/06501 BMW, 1998/17028 BM, and 1984/01620 3-SERIES in class 12 by unauthorised use in the course of trade in relation to windscreens and windows for BMW vehicles.
  • The respondent is restrained from infringing the applicant's rights in well-known unregistered trade marks BMW, BM, 3-SERIES, E30, E36, and E46 by unauthorised use in relation to windscreens and windows for BMW vehicles.