• Home
  • About Us
    • Our Core Team
    • Our Journey
    • Departments
    • Media Center
    • Why the Name BananaIP? Why Not?
  • Services
    • PATENTS
    • COPYRIGHTS
    • ECOMMERCE LAW
    • ENTERTAINMENT LAW
    • TRADEMARKS
    • INDUSTRIAL DESIGNS
    • TECHNOLOGY LAW
    • OPEN SOURCE SOFTWARE (OSS) LICENSE ADVISORY
    • CORPORATE TRAINING & CULTURE DEVELOPMENT
  • Areas of Practice
    • AI, ROBOTICS, COMPUTER VISION, NLP & AUTONOMOUS VEHICLES
    • AUTOMOTIVE, AEROSPACE, POWER & SPACE
    • BIOSCIENCES, PHARMA, CHEMISTRY, NUTRACEUTICALS & AYURVEDA
    • ELECTRONICS, TELECOM, COMMUNICATIONS, IT & SOFTWARE
    • ECOMMERCE, ENTERTAINMENT, EDUCATION AND PUBLISHING
    • GREEN TECHNOLOGIES, ELECTRIC MOBILITY, BATTERY MANAGEMENT & TELEMATICS
    • MECHANICAL, MANUFACTURING, TEXTILES, METALLURGY & CONSUMER PRODUCTS
    • MEDICAL TECHNOLOGIES, MEDICAL DEVICES, FOOD & HEALTHCARE PLATFORMS
  • Resources
    • Intellepedia – IP News Center
      • About Intellepedia
    • Act & Rules
    • Frequently Asked Questions
  • Careers
  • Contact Us
November 3, 2015 BananaIP Reporter Intellectual Property, Trademarks

Trademark Infringement in the Automobile Industry Part II : BMW Emblem case

HomeAll Posts...Trademark Infringement in the Automobile...
  • Home
  • About Us
    • Our Core Team
    • Our Journey
    • Departments
    • Media Center
    • Why the Name BananaIP? Why Not?
  • Services
    • PATENTS
    • COPYRIGHTS
    • ECOMMERCE LAW
    • ENTERTAINMENT LAW
    • TRADEMARKS
    • INDUSTRIAL DESIGNS
    • TECHNOLOGY LAW
    • OPEN SOURCE SOFTWARE (OSS) LICENSE ADVISORY
    • CORPORATE TRAINING & CULTURE DEVELOPMENT
  • Areas of Practice
    • AI, ROBOTICS, COMPUTER VISION, NLP & AUTONOMOUS VEHICLES
    • AUTOMOTIVE, AEROSPACE, POWER & SPACE
    • BIOSCIENCES, PHARMA, CHEMISTRY, NUTRACEUTICALS & AYURVEDA
    • ELECTRONICS, TELECOM, COMMUNICATIONS, IT & SOFTWARE
    • ECOMMERCE, ENTERTAINMENT, EDUCATION AND PUBLISHING
    • GREEN TECHNOLOGIES, ELECTRIC MOBILITY, BATTERY MANAGEMENT & TELEMATICS
    • MECHANICAL, MANUFACTURING, TEXTILES, METALLURGY & CONSUMER PRODUCTS
    • MEDICAL TECHNOLOGIES, MEDICAL DEVICES, FOOD & HEALTHCARE PLATFORMS
  • Resources
    • Intellepedia – IP News Center
      • About Intellepedia
    • Act & Rules
    • Frequently Asked Questions
  • Careers
  • Contact Us

 

This post discusses the scope of protection of black and white trade mark registrations in infringement proceedings.

 

The OHIM (Office for Harmonization in the Internal Market) made the announcement, on 15 April, 2014, about a new common practice for trademarks registered in black and white. The OHIM and the participating national offices have now issued a Common Communication, together with details of the implementation process.

 

As per the new Common Practice, a black & white (or grayscale) mark will only be considered identical to a sign in colour when the differences between the signs are so negligible that they would go unnoticed by the average consumer.  A negligible difference would be one that a reasonably observant consumer will perceive only upon a side by side examination of the marks.

 

After the enforcement of the new Common Practice, the landmark BMW Emblem case (BGH) was decided on 12 March, 2015, in the German Federal Court. In the present case, the Plaintiff was the famous automobile company, whereas the Defendant sold auto parts nationwide and internationally as well. It also provided BMW plaques/logos, which had a similar design to that of the plaques of the Plaintiff. The main question to be decided in the case was whether the Defendant was entitled to manufacture and sell BMW plaques to be fitted on the front and rear of the vehicles due to the absence of a registered BMW colour logo. The Court issued a decision on the scope of protection of black and white logos spilling over colour. The Court clarified that it does not consider black and white registrations to be identical to marks using the same sign in colour.

 

The German Federal Court held the signs to be not identical with respect to the German implementation of Art. 5(1)(a) of the Trade Mark Directive. The decision found that the infringing product deviates significantly in colour from the registered trade mark. Thereby meaning, that the scope of protection of black and white registrations extends only to black and white uses in double identity cases, as long as the deviation in colour is not negligible.

 

However, the decision went in favour of BMW due to the well-knowness of trade mark. The Court also stated that damages can be claimed in case of infringement of a well-known trade mark which is used in a specific colour or has an enhanced reputation for that color, even though it have not been registered in those colours.

 

Authored by Ryan Mendonca

Source- here

 

Related

black and white trademarks BMW BMW Emblem case BMW LOGO OHIM registered marks Trademark Infringment well-known trademark

Post navigation

Previous post
Trademark Infringement in the Automobile Industry Part I: Tata Motors, Bajaj Auto Limited
November 3, 2015
Next post
Trademark Infringement in the Automobile Industry Part III: Bentley Trademark suit
November 3, 2015
Contact us
Patent Services
  • Patent Search & Analytics Services
  • Patent Drafting, Filing & Registration Services
  • Patent Prosecution Management Services
  • Freedom to Operate (FTO) Analysis & Opinion Services
  • Patent Infringment Analysis Services
  • Patent Licensing & Commercialization Services
  • PCT (International application) Filing Services
  • Patent Opposition, Revocation and Litigation Management Services
Our Departments
Categories
  • Accessibility
  • Biological Diversity
  • Case Study
  • Copyrights
  • e-Commerce Law
  • Freedom to Operate (FTO)
  • General
  • Geographical Indications (GI)
  • Industrial Designs
  • Intellectual Property
  • IP and Antitrust/Competition
  • IP Audits
  • IP Commercialization/Licensing
  • IP for Start Ups
  • IP Training
  • IP Valuation
  • Job Postings
  • Media and Entertainment Law
  • Open Source Licensing
  • Patent & Design Statistics
  • Patents
  • Plant Varieties
  • Press Release
  • Privacy / Data Protection
  • Publicity Rights/ Celebrity Rights
  • Social Media Law
  • Sports Law
  • Trade Secrets
  • Trademarks
  • Traditional Knowledge
  • Uncategorized

Write to us at [email protected]

BananaIP Counsels Logo

BananaIP Counsels was founded in 2004 with the vision of providing law, technology, and business driven intellectual property (IP) services.

  • Intellectual Property FAQ’s
  • Privacy Policy
  • Terms of Use
  • Accessibility
  • Contact us
  • Intellepedia IP News Center – Terms of Use

Our Services

  • Areas of Practice
  • Intellectual Property Services
  • Patent Services
  • Trademark Services
  • Copyright Services
  • e-Commerce Law Services
  • Entertainment Law Services
  • Technology Law Services
  • Industrial Design Services
  • Open Source License Advisory Services
  • Corporate IP Training Services
  • Accessibility & Disability Law Services

Contact us

BananaIP Counsels

Head Office, Bangalore

No.40, 3rd Main Road,  JC Industrial Estate, Kanakapura Road, Bangalore – 560 062.

Telephone: +91-80-49536207

Telephone: +91-80-26860414/24/34

Email: [email protected]

Copyright © 2004-2023 BananaIP Counsels. All Rights Reserved.

Linkedin Twitter Instagram Facebook Youtube
  • Email us
  • LinkedIn
  • YouTube
  • Instagram