The auto industry is rich in IP. Trade marks protect all-important brand names, logos and taglines. Registered designs protect things like trade dress, upholstery patterns and the shape and design of wheels and other car parts. Patents protect various technologies and technological improvement in areas such as connectivity, locking, intelligent braking, reversing and steering and much, much more. And copyright and contractually protected know-how also protect a wealth of valuable materials and proprietary information that form part of any auto company’s IP tapestry.
It follows that when any of the ‘strands’ in the IP tapestry are infringed (we love a good extended metaphor at Briffa) it’s a really big deal. And auto companies are not shy about taking steps to protect their IP, as illustrated by the BMW example below.
BMW v Vannetukku
Vannetukku is a Finish car rim manufacturer, established in the 1960s. It was one of the first companies to launch its tyre and wheel online store in 2006. BMW recently alleged that Vannetukku’s logo infringed the well-known BMW logo:
Vannetukku’s logo consists of a circular shape, depicting a wheel in the colours blue and white, with a thick outer layer of the circular sign in the colour black. The word “BLAUKREUZ” appears beneath the circular shape.
The Regional Court in Frankfurt (not the final court) ultimately found that there was a likelihood of confusion between the marks and was satisfied that Vannetukku’s use of its logo also constituted ‘free-riding’ on the reputation of the BMW logo within the meaning of Article 9(2)(c) of the EUTMR.
There are a few important take-away points from the BMW saga:
Imitate at your peril. Imitation is the sincerest form of flattery, or so they say. When it comes to the protection of valuable IP, the likes of BMW are not going to see it that way. And any transparent attempt to ‘get close’ to a competitor’s brand or product is likely to elicit a defence response. Companies that adopt a strategy of trying to achieve commercial success by emulating (however subtly) an existing brand or product with a well-known reputation should consider the very real risk that their actions will ultimately be challenged and they could end up being ordered to change their brand or take their products of the shelves.
Protect all aspects of the brand. The BMW case is a prime example of why it is so important to protect all aspects of your brand. If BMW had obtained trade mark protection for the word only (i.e. for BMW) but had not obtained trade mark protection for the figurative mark (i.e. the blue, white and black logo) it would have been in a much weaker position and would potentially have been unable to prevent Vannetukku’s use of its logo. Speaking to an IP specialist, as early as possible, is essential. There will be brand identifiers that you will not have thought of (headline brand names and logo, secondary brand names and logos, taglines, shapes, colours, moving images etc.). There will also be other types of IP protection that you will not have thought of (registered designs can also be used to protect trade dress, copyright can be used to protect artistic elements in logos, in some jurisdiction registering copyright can bolster brand protection etc.).
Be vigilant and take actions! There is an old doctrine which, put simply, says that the law “aids the vigilant and not those who slumber on their rights.” In other words, finding out about, and responding to, infringement as early as possible is important, because if you tolerate infringement you may not be able to complain about it later. Again, speaking to an IP specialist, as early as possible, is essential. Even if you think you have a weak claim because you don’t have a trade mark, an experienced IP litigator will be able to advise you on other avenues that might strengthen your position such as a passing off claim or a copyright infringement claim (neither of which require prior registration).
Briffa are experts in all aspects of intellectual property law and practice. We advise our clients on non-contentious matters, such as protecting their IP at the outset and making money from their IP through licensing and other commercial arrangements. We also advise our clients on contentious matters, such as trade mark, passing off, copyright and design right disputes. Regardless of your business or industry, we can help you. If you would like to arrange a free consultation, please do so via our website, call 020 7288 6003 or email firstname.lastname@example.org.
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