Verimark (Pty) Ltd v Bayerische Motoren Werke AktienGesellschaft ; Bayerische Motoren Werke AktienGesellschaft v Verimark (Pty) Ltd (250/06) [2007] ZASCA 53; 2007 (6) SA 263 (SCA); 2007 BIP 213 (SCA) (17 May 2007)

Verimark (Pty) Ltd v Bayerische Motoren Werke AktienGesellschaft ; Bayerische Motoren Werke AktienGesellschaft v Verimark (Pty) Ltd (250/06) [2007] ZASCA 53; 2007 (6) SA 263 (SCA); 2007 BIP 213 (SCA) (17 May 2007)

The Supreme Court of Appeal held that Verimark's use of the BMW logo on cars in advertisements and packaging was not trade mark use as contemplated by section 34(1)(a) of the Trade Marks Act. The logo identified the car, not the origin of the Diamond Guard product, and consumers would not perceive a material link between BMW and Diamond Guard. The use was incidental and did not serve as a badge of origin for the polish. Regarding section 34(1)(c), the Court found that although the BMW logo is well known, Verimark's use did not take unfair advantage of or detrimentally affect the distinctive character or repute of the BMW mark. The consumer would see the logo as part of the car, not as an...

Citation
[2007] ZASCA 53
Parties
Appellant: Verimark (Pty) Ltd; Respondent: Bayerische Motoren Werke AktienGesellschaft; Appellant: Bayerische Motoren Werke AktienGesellschaft; Respondent: Verimark (Pty) Ltd
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
17 May 2007
Case Number
250/06
Procedural Posture
Civil Appeal / Appeal and Cross Appeal From High Court Judgment
Outcome
Appeal upheld; cross-appeal dismissed; application for interdict refused.
Judges
Harms, Streicher, Cloete, Ponnan, Combrinck
Legal Topics
Trade Mark Infringement, Anti Dilution Provision, Badge of Origin, Unfair Advantage, Consumer Perception
Intellectual Property Commercial and Corporate Trade Mark Infringement Anti Dilution Provision Badge of Origin Unfair Advantage Consumer Perception

Case Brief

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Parties

Verimark (Pty) Ltd

Appellant

Bayerische Motoren Werke AktienGesellschaft

Respondent

Bayerische Motoren Werke AktienGesellschaft

Appellant

Verimark (Pty) Ltd

Respondent

Procedural Posture

Civil Appeal / Appeal and Cross Appeal From High Court Judgment

Legal Issues

  1. 1 Whether Verimark's use of the BMW logo in advertisements and packaging constitutes trade mark infringement under section 34(1)(a) of the Trade Marks Act.
  2. 2 Whether such use takes unfair advantage of or is detrimental to the distinctive character or repute of the BMW mark under section 34(1)(c).

Ratio Decidendi

The Supreme Court of Appeal held that Verimark's use of the BMW logo on cars in advertisements and packaging was not trade mark use as contemplated by section 34(1)(a) of the Trade Marks Act. The logo identified the car, not the origin of the Diamond Guard product, and consumers would not perceive a material link between BMW and Diamond Guard. The use was incidental and did not serve as a badge of origin for the polish. Regarding section 34(1)(c), the Court found that although the BMW logo is well known, Verimark's use did not take unfair advantage of or detrimentally affect the distinctive character or repute of the BMW mark. The consumer would see the logo as part of the car, not as an...

Court Disposition

Appeal upheld; cross-appeal dismissed; application for interdict refused.

Orders

  • The appeal is upheld and the cross-appeal dismissed with costs, including the costs of two counsel.
  • The order of the court below is amended to read: 'The application is dismissed with costs.'