Monday, September 10, 2007

THE DESCRIPTIVE USE OF TRADE MARKS FOR VEHICLE PARTSDr Wim AlbertsIn Bayerische Motoren Werke Aktiengessellschaft v Commercial Auto Glass (Pty) Ltd, a decision of the Transvaal Provincial Division, the respondent made use of the BMW trade mark in advertisements, invoices and product labels. Advertisements would for instance state "car windscreens" and below that there would be "BMW" or "BMW E30 3-Series 83-92 R355". BMW averred that this use by the respondent of its trade mark in relation to unauthorised windscreens was likely to give the impression that the windscreens being offered were in some way connected or associated with it. The respondent relied on the defence created by section 34(2)(c) of the Trade Marks Act 194 of 1993, which reads as follows:

"(2) A registered trade mark is not infringed by –

(c) 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 further that the use contemplated in paragraph
….(c) is consistent with fair practice."

The respondent argued that the use of the BMW trade marks is inevitably required to identify the appropriate spare part or accessory, and that the manner of use adopted by him was the only practical and effective way of referring to and distinguishing BMW vehicles (paragraph 35). The court referred to a number of authorities. Firstly, to the decision in Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A). Here the approach was followed that the use of the particular words must not be a mere device to achieve some ulterior object, such as to obtain an advantage from the goodwill of the registered mark (page 645 F). The court then referred to the textbook writers Webster and Page South African Law of Trade Marks (1997) 12-74, who distinguishes between the use of "AB spares", and "Spares for AB vehicles", where the latter would not be infringing use. The court also considered the earlier decision in Bayerische Motoren Werke AG v Autostyle Retail, case number 5887/2005, a decision of the Transvaal Provincial Division, delivered on 3 November 2005. In that matter it was said that use will only be bona fide if it is made clear that the goods of the person concerned is not connected in the course of trade with the proprietor of the mark.

The respondent in the Auto Glass case argued that it would be illogical if, in effect, a single sentence could move the use of a trade mark into a situation where there would not be infringement. This was said on the basis that it is trite that an explanatory statement cannot assist in avoiding infringement. The court however rejected this view, and held that that is precisely what is required to constitute bona fide use, and use consistent with fair practice.

When the matter came before the Supreme Court of Appeal, the appeal was rejected, and the following was, amongst others, said:

"The question that arises is why the appellant insists on conducting its business in the manner described. Why can it not, through the use of a few words, convey the true facts to the public? The answer does not appear from the papers and none was suggested during argument save for relying on the appellant’s ‘right’ to act in the manner it does. From this one can only deduce that the appellant wishes to obtain an unfair advantage from the use of the trade marks and does not wish to inform the public of the true facts concerning the origin of the windscreens. In other words, the argument that the advertisements ‘consist wholly of descriptive, truthful commercial speech’ is without factual foundation. On that finding the use cannot be bona fide or consistent with fair trade practice and it follows that the high court’s finding that the appellant is infringing BMW’s trade marks under s 34(1)(a) was correct."

It is thus possible to use a registered trade mark to indicate the characteristics of a particular vehicle part, but the use must be bona fide.