Sunday 21 January 2018

BMW mechanic cannot use trademark on website

Tim Healy

CAR manufacturer BMW is entitled to injunctions preventing what it claimed was the "parasitic" use of its iconic trademark by a mechanic in promoting his motor servicing business on the internet, a High Court judge ruled.

Mr Justice Sean Ryan said Eward Ronayne was "not a man looking for a name for his business but making a business out of a name" when he infringed the company's trademark on his website by using the name "BMWCare"  to promote his garage in Cloonfad, Roscommon.

The judge said he will deal in the New Year with other applications from BMW requiring Mr Ronayne to transfer the domain names involved to the company, to deliver up or destroy business stationery bearing the BMW trademark as well as damages for infringement of the trademark.

The court heard BMW spends €4m a year on advertising in Ireland and while it had no objection to Mr Ronayne referring to BMW in the course of his business, it had to be in a legally permissible way.

Mr Ronayne, who counter-claimed, said the incorporation of BMW into his domain names was a non-infringing use under the 1996 Trade Marks Act. He had also argued the use was in compliance with a 1997 European Court of Justice (ECJ) decision on trademarks involving Porsche.

Mr Justice Ryan, in his judgment yesterday, said Mr Ronayne was an expert mechanic working from a small garage and was an admirer of BMW cars.   He bought a piece of equipment in 2005/6 which allowed him carry out repairs on BMW, including in some cases where main dealers could not do so.

Around this time, one of his customers was Michael Farrell, a web designer with whom Mr Ronayne developed a close relationship and who provided advice on setting up the website.

Mr Ronayne argued he had studied the ECJ Porsche decision and this entitled him to call himself a BMW specialist once he distanced himself from the company by saying he was an independent specialist.

Mr Justice Ryan said Mr Ronayne was using the BMW name to create a business using the name.   He was not advertising services but creating an identity, he said.

He used BMW's name and "merely added a common descriptive word which amounted to taking on the plaintiff's identity "Mr Ronaye's activities were not authorised by any ECJ judgment, he said.

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