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Monday, 6 August 2012

US: Land-Rover Sues "British Northwest Rover" Restoration and Repair Company

My friend Mike Atkins, a trade mark attorney in Seattle, reports on his blog that Land-Rover are taking action against a repairer which calls itself British Northwest Rover (and apparently, or rather allegedly, used to call itself "British Northwest Land-Rover). Why the manufacturer might consider these uses to be infringements of its trade marks hardly needs explaining. But in the USA the doctrine of "nominative fair use" is rather wider, and more flexible, than the equivelant in the UK (section 11 of the Trade Marks Act 1994), and there is at least a chance that the repairer will be able to establish that it is merely using the trade mark to indicate the sort of vehicle for which it offers services.

In this country, I think we could safely say that including the trade mark in your business name is never going to satisfy the test in section 11, which (as far as this defence is concerned) demands that the use be in accordance with honest practices in industrial and commercial matters. Although that phrase, taken as it is from the European Community directive, is far from clear (and seems to cover only a situation in which the defendant's use of the trade mark is in some way dishonest, which imports a degree of subjectivity not usually found in trade mark law), it is almost inconceivable that it might permit a repairer to use the name of a vehicle maker in its corporate or business name. That would surely imply a connection with the manufacturer, a relationship going beyond whatever relationship might exist, which would rule out the use of the name. See AB Volvo v Heritage (Leicester) Ltd [2000] FSR 253, and Case C-63/97, BMW v Deenik. So the moral is, whatever the courts in the States might say, don't try that here.

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