Slider
9 Jul

How to legaly use someone else’s trademark?

Case XXII GWzt 6/08
In 2008 a Community Trade Mark and Design Court handed down an interesting judgement in which limits of using someone else’s trademark have been laid down.

Someone else’s trademark

The subject matter of arbitration:

  • BMW – the plaintiff, claimed that defendant has illegaly been using the plaintiff’s community trademark – BMW
  • Defendant was using, inter alia, words “BMW service” in his company name, although since 2004 he hasn’t been an authorised dealer of BMW. He was also using such words on his website and on a sign placed outside his service.

Judgement:

  • The court upheld the fact that the claimant’s rights were infringed
  • Prohibitet the defendant from unlawful use of the word and figurative mark BMW for information and commercial puropses
  • Prohibitet the defendant from unlawful use of the word community trademark BMW in a way contrary to fair trade rules. In particular, in a way which may evoke doubts about some economic interdependences between the parties
  • Prohibitet the defenant from conducting business activities using the words “BMW service”

Summary of justification:

  • Someone else’s trademark may be used if it’s necessary for declaring the reason of using goods or services. However it should be noted, that such use must be in accordance with honest practices in industrial or commercial matters.
  • Using of a trademark in accordance with honest practices happens, if the enterpreteur e.g. sets on his website an information “we distribute BMW, FORD, FIAT cars”. Placing a big, graphic trademark BMW on your website would be unlawful, becouse it may mislead the public.
  • Using of a trademark will not be in accordance with honest practices, if:
    1. it is done in such a manner as to give the impression that there is a commercial connection between the third party and the trademark owner
    2. it affects the value of the trade mark by taking unfair advantages of its distinctive character or repute
    3. it entails the discrediting or denigration of that mark.
  • The infringement of a trademark happens if there is a likelihood of confusion. Whether there has been such presentation depends on the facts of the case, and it is for the referring court to determine whether it has taken place by reference to the circumstances.

Mikołaj Lech

Do you need legal help? Contact with me.
+48 607 416 240
office@lech.bydgoszcz.pl

{ 0 comments… add one now }

Leave a Comment

Previous post:

Next post: