Replacement Parts Supplier unsuccessful on appeal against BM
by EVANDER KLUM
Commercial Auto Glass Limited, a replacement parts supplier has been unsuccessful in its appeal against the judgment of the Transvaal Provincial Division of the High Court, interdicting it from infringing the registered trade marks BMW, BM and 3-SERIES. It also included the unregistered well-known trade marks E30, E36 and E46, which are all under Bayerische Motoren Werke Aktiengesellschaft (BMW AG).
Commercial Auto Glass (Pty) Limited has long been in business, supplying and fitting accessories, spare parts, and the likes of some BMW performance parts for all sorts of vehicles. In its advertisements in the media, the written quotations and invoices of its product labeling made use of trade marks like ��BMW E36 3-SERIES��) on its windscreens. It was without any qualification or explanation about the definite nature or origin of the products. Thus, BMW AG found the case well enough to sue the company.
BMW AG has instituted proceedings according to the infringement of its registered and well-known unregistered trade marks. Those were in provisions of Section 35(1)(a) and/or 34(1)(b) as well as Section 35 of the Trade Marks Act.
The Appellant defended and argued that they did not intend to inform the public that the windscreens they supply are original BMW windscreens. They say the use of the trade marks were simply to implicate that the goods fit to BMW cars. In addition, it alleged that the use could not merely be considered as ��trade mark use�� and it was constitutionally protected form of commercial speech instead. They say such use is held within the scope of the defence in Section 34(2)(c) of the Trade Marks Act, which indicates: "A registered trade mark is not infringed by ��. the bona fide use of the trade mark in relation to goods or services where it is reasonable to indicate the intended purpose of such goods, including spare parts and accessories, and such services, ��. provided that the use contemplated ��. is consistent with fair practice".
All the Appellant��s arguments were rejected by the Supreme Court of Appeal (SCA) of South Africa. It has been proven that the use of the said trade marks could actually deceive a substantial number of individuals, which turned out to be the proof that the use was more like implying that the windscreens were genuine BMW parts. Same has happened in the previous South African case, Bayerische Motoren Werke AG vs Autostyle Retail (TPD case 5887/2005), which provides: ��Use will not be bona fide, however, if the user does not unequivocally make it clear that his goods are not connected in the course of trade with the proprietor of the trade mark. It follows that bona fide use in Section 34(2)(c) means honest use of a trade mark, without the intention to deceive anybody and while unequivocally making it clear that the goods are not connected in the course of trade with the proprietor of the trade mark".
With the approval of the European Court of Justice, the SCA also adapted the approach in the Gillette case. SCA referred that the account should take the overall presentation of the products marketed by third parties. It has also considered the effort made by the third party in ensuring that consumers would be able to determine its products from the ones of the trade mark owner.
A release in modaq.com mentioned that the SCA acknowledged the appeal, but in a very limited extent, for technical reasons. It granted substituted orders interdicting Commercial Auto Glass (Pty) Limited while awarding BMW AG the costs of the hearing and the costs of appeal.
