Bayerische Motoren Werke AG v Shaun Coley (trading as BMW Mini Gearbox Centre), Intellectual Property Enterprise Court
The IPEC has made declarations that a garage and car parts business trading as “BMW Mini Gearbox Centre” and “Mini One Gearbox” was passing off and had infringed BMW’s registered trade marks.
BMW had brought trade mark and passing off proceedings against Mr Coley’s business over his use of BMW’s signs, including the Mini wings logo and the URL “minigearbox.co.uk”. Mr Coley argued he was entitled to use the logo and signs as he had used them descriptively. BMW challenged this by asserting that Mr Coley had taken unfair advantage of the goodwill associated with the MINI trade mark and, in addition, use of the Mini domain name was fraudulent. The Court highlighted that the main question to ask was whether the average consumer would perceive Mr Coley’s website to be an official BMW website, or whether the public would understand Mr Coley’s business to be independent in selling gearboxes suitable for Mini cars. Should the latter have been the case, there would have been no trade mark infringement or passing off.
The Court ruled that the website posed a genuine risk of being perceived as either an official BMW website, or authorised or licensed by BMW. If the wording “Independent Gearbox Centre” had been put in a larger font and before the wording “Mini One Cooper” on the website, then it would have been clear that Mr Coley was selling reconditioned gearboxes, suitable for Mini and Cooper cars. In such circumstances, there would have been no passing off or trade mark infringement. The Court recommended Mr Coley make the suggested amendments to his trade name and website, in order to come to an agreement with BMW.
