BMW v Round & Metal Ltd, High Court
BMW own four Community-registered designs for vehicle wheels as well as five related Community trade marks (CTMs). Round & Metal Ltd (RML) imported and sold replica alloy wheels which had the same appearance as the registered designs. BMW issued proceedings against RML on the grounds that there had been an infringement of its Community-registered designs and CTMs.
The Community Designs Regulations (CDR) governs Community-registered designs and, under the transitional article 110(1) (which was put in place in the expectation that it would be superseded following a consultation), there is for the time-being no protection for a Community-registered design which “constitutes a component part of a complex product so as to restore its original appearance”. RML agreed that the wheels it sold infringed BMW’s Community-registered designs, but argued that article 110(1) of the CDR protected it from infringement proceedings.
The Community Trade Mark Regulation (CTMR) gives BMW rights over its registered trade marks, giving BMW the right to prevent unauthorised third parties from using in the course of trade: (i) any sign identical with a CTM in relation to goods or services which are identical with those for which the CTM is registered; and (ii) any sign which is similar to the CTM where the goods or services covered by the CTM are similar, causing a likelihood of confusion and possible association between the CTM and the sign.
The High Court ruled that RML had infringed both BMW’s Community-registered designs and CTMs.
In relation to infringement of the registered designs, the High Court ruled that article 110(1) did not apply to RML for the following reasons:
1) Article 110(1) only applied where the component part’s design was dependent on the appearance of the complex product so that replacement parts had to match that design. The aim of the article was to ensure there was a realistic alternative to the original manufacturer for replacement parts. The design of alloy wheels was not dependent on the car as the wheels of different designs could be placed on the same car.
2) The wheels sold by RML were used to upgrade rather than repair cars and were not used to restore cars to their original appearance.
In relation to the CTMs, the High Court ruled as follows:
1) Stickers on RML’s products referring to BMW would confuse end-user purchasers into thinking that the origin of the wheels was BMW.
2) An eBay store operated by RML gave the impression that the products being sold were genuine BMW products such that there was a likelihood of confusion.
As such, BMW’s Community-registered designs and CTMs had been infringed.
The case is interesting as it shows the difference between “spare parts” for vehicles where there are no realistic alternatives (where article 110(1) would apply) and “luxury parts” which can replace existing parts but with the intention of enhancement rather than repair, where, in this case, article 110(1) did not apply.