The High Court has found that an independent garage’s use of the name “BMWCARE” infringed BMW trademarks and amounted to passing off. Mr Justice Ryan ruled on 19 December 2013 that the name, website and BMW related domain names could imply a commercial connection with the car maker, despite statements that the garage was independent.
The case was brought by Bayerische Motoren Werke Aktiengesellschaft against Edward Ronayne, who traded as BMWcare from a garage in Cloonfad, County Roscommon. Mr Ronayne began using the name in 2005 and launched a website in 2006 to promote his BMW repair business. He said he had relied on the European Court of Justice’s decision in BMW v Deenik, which allows a repairer to describe services involving BMW vehicles, provided the use meets the legal conditions.
BMW alleged infringement of its trademarks and passing off. Mr Ronayne denied the claims, arguing that BMWcare was a legitimate business name, that he had made his independence clear and that BMW had acquiesced in his use. He also counterclaimed that BMW’s “Original BMW Care Products Natural Care” mark was descriptive and invalid.
The judge accepted that a mechanic may refer to BMW when telling the public that he repairs or specialises in BMW vehicles. But he distinguished that permitted description from using BMW as part of a business identity. He found that “BMW” was the distinctive element of the defendant’s name and that adding the general word “care” did not sufficiently separate the business from BMW. The judge also found that the website’s design suggested an association, while its statements about independence were too obscure and insufficiently prominent to undo that impression.
Mr Justice Ryan rejected the acquiescence defence, finding that BMW’s mailings to the defendant did not show acceptance of his use of the name. He also dismissed the counterclaim: the inclusion of BMW made the “Original BMW Care Products Natural Care” mark distinctive, rather than exclusively descriptive. The court found infringement, including under the rules protecting marks with a reputation, and concluded that the plaintiff had established the elements of passing off.
The judgment records that use of the BMW roundel had been conceded and that it had been removed from the website, though the parties differed on when. The court’s final orders restrained Mr Ronayne from using “BMWCARE” or typographical variants in his business or on his website, restrained use of the website in its then current form, and restrained use of the domain names he had used or acquired that included BMW. The court left other relief and consequential orders for the parties to address; the judgment did not determine those matters.