The Court of Justice defines the conditions for use of a trade mark by a garage business which is not part of the manufacturer's dealership network but which nevertheless uses that mark in the resale, maintenance or repair of vehicles
Mr Deenik runs a garage in the Netherlands and advertises the sale of second-hand BMW cars and the repair and maintenance of BMW cars. The German manufacturer Bayerische Motorenwerke AG (BMW) markets its cars through a network of dealers which it supervises in the Netherlands with the help of BMW Nederland BV. Mr Deenik is not affiliated to the network.
BMW sought an order from the Netherlands courts prohibiting Mr Deenik from using the BMW mark or any similar sign in his advertisements, publicity statements or other announcements and ordering him to pay damages.
BMW appealed in cassation to the Hoge Raad der Nederlanden (Supreme Court, Netherlands), which referred questions to the Court of Justice on the scope of and rules for the application of the provisions of Community law on trade marks.
In its judgment, the Court considered whether or not the proprietor of the BMW mark may prohibit the use by a third party (the garage business) of its mark in advertising the resale of BMW cars or the repair and maintenance of those vehicles.
The Court concluded that, under the Community trade marks directive, the proprietor of the BMW mark may not prohibit a garage business from using the BMW trade mark for the purpose of informing the public that it carries out repairs and maintenance of BMW cars or that it has specialised or is a specialist in the sale or repair and maintenance of those vehicles.
Such, however, is not the case if the BMW mark is used in a way that may create the false impression that there is a commercial connection between the garage and the trade mark proprietor, in particular that the garage forms part of the BMW distribution network.
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