Companies which spend millions on establishing their brands in the public mind have the comfort of knowing that the law will protect their investments. In a case in point, vehicle manufacturer BMW came down hard on a small businessman who set up a company which featured those three letters in its name.
After BMW issued passing off and trade mark infringement proceedings against him, the businessman pointed out that his initials are BMW and that his company has nothing to do with the automotive industry. Operating as a one-man band, he did not advertise the services he provided through the company and only used the company name when invoicing a single client.
Faced with BMW's claims, he agreed to change the company's name by deleting the capital letter 'M' from its title. BMW had no further objection to the company's name, but nevertheless continued with the proceedings on the basis that there was, arising from his past conduct, a risk that he might seek to register another company incorporating the BMW acronym.
In granting BMW summary judgment on both claims, the High Court found that the company's original name created a likelihood of confusion amongst those consulting the register of companies, a significant proportion of whom might have assumed that the company was in some way connected to BMW. The ruling opened the way for BMW to seek an injunction restraining the businessman from making further offending use of the acronym.
Even after he had agreed to BMW’s demands, the costs to the businessman are likely to have been substantial. To avoid the consequences of infringing another business’s registered or unregistered trade mark or to enforce your own rights or for advice on any other intellectual property matter or dispute, please contact Roy Colaba on 0808 166 8827 or email him on r.colaba@sydneymitchell.co.uk.
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