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A car repair shop was sentenced for trademark infringement on account of unlawful use of BMW’s and Rolls-Royce’s logo trademarks

17.04.2017
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The decision is an excellent reminder for companies performing vehicle repair and servicing that using logos of car brands in advertising and other marketing does not constitute a neutral reference to other parties’ trademarks.

We successfully represented BMW and Rolls-Royce in legal proceedings concerning trademark infringement in the Market Court (Market Court 31 Oct. 2016 no. 641/16).

According to the Market Court, the use of pictorial trademarks is not an allowable reference to other parties’ trademarks for the purpose of indicating the use of a service.

bmw_mini_rollsroyce.jpgIn this case, a person conducting servicing and repair business under a commercial name used the BMW, Mini and Rolls-Royce logos, corresponding to pictorial trademarks, on the web site. The Market Court applied both the Trademarks Act and the Trademark Directive to the case, and its decision was in compliance with the rule of law of the Court of Justice of the European Union adopted in an earlier BMW case (C-63/97). According to the rule of law, an entrepreneur has the right, by virtue of the Trademark Directive, to refer to another party’s trademark, if this is necessary for indicating the use of goods or services, but not in a way that could create a mental image suggesting that the parties have a business relationship or that the retailer business belongs to the trademark owner’s distribution network or that there is a special relationship between the companies.

In the present case, the entrepreneur referred to the fact that they have used the marks only to show to the public that they repair and service vehicles manufactured by BMW and Rolls-Royce, are specialised in the repair and servicing of these vehicles and are an expert on them. The Market Court, however, found that the entrepreneur infringed trademark rights, as their action could create a mental image suggesting that they have a business relationship with BMW and Rolls-Royce or belong to their distribution network. The Market Court did not require that such a relationship should be specifically mentioned on the web site. In the justification of the decision, the Market Court stated, “the ... logos used on the company’s web site were the plaintiff companies’ pictorial trademarks, and so this is not a case where the said names have been used neutrally in written form.” The Market Court obliged the entrepreneur to pay reasonable compensation for the unlawful use of the marks. The decision is non-appealable.

- The decision is an excellent reminder for companies performing vehicle repair and servicing that using logos of car brands in advertising and other marketing does not constitute a neutral reference to other parties’ trademarks.

The ruling is one of the landmark court decisions regarding IPRs in Finland in 2016 that Marcus Norrgård, Professor of Helsinki University, brought up in the IPR seminar of 13 February 2017.