BMW: Still Shaping Trade Mark Law
In a number of cases involving BMW, South African courts have made it very clear that a trade mark registration is only infringed if a third party makes unauthorised “trade mark use” of that trade mark. This may sound a little odd, but what it means is that the third party must use the registered trade mark in a way that suggests that there is a commercial connection between the third party and the owner of the registered trade mark. In other words, the third party must use the registered trade mark as a badge of origin.
In the famous case of BMW v Verimark, the issue was whether the direct marketing firm Verimark had, by using a BMW vehicle in a TV ad for car polish, infringed BMW’s trade mark registration for its famous roundel logo, a logo that was clearly visible in the TV ad. The Supreme Court of Appeal (“SCA”) held that there was no trade mark infringement because the usage of the BMW logo was “non-trade mark use”, what the court also described as “descriptive use” or “incidental use”. In other words, Verimark had not used the BMW logo in a way that suggested a commercial connection between the car polish that it was selling and BMW.
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