In August last year, the Motor Law blog reportedthe first instance judgment in BMW v Grandmark, a case before
the North Gauteng High Court, Pretoria. Ranchod J held that there was
no infringement of BMW’s registered designs for certain spare parts
(all being for external components of the 3 series, which were
claimed to e ‘aesthetic’), nor was there trade mark infringement.
Now the Supreme Court of Appeal has rejected BMW’s appeal.
The designs concerned did not meet the
requirements for registration as aesthetic designs because, while the
appearance of the car itself was no doubt an important factor in
attracting customers, when they came to buy replacement parts they
were not interested in the aesthetics of the article. All that
mattered was whether it would do the job.
The trade mark point concerned the use of the
letters ‘BM’ in parts numbers printed on the packaging. BM was a
registered trade mark of the manufacturer, but the court held that
there was no infringement because that use of the letters was not
‘trade mark use’. Trade marks function as badges of origin, and
in the context of a parts number it would not be regarded by a
customer as an indication of origin. In a thoroughly commonsense
judgment, Nugent JA went on to say that the fact that a different
origin was clearly indicated ensured that there was absolutely no
danger of the letters being taken as indicating that BMW had made the
components.
However, some commentators believe that the
outcome of the design case goes against the spirit, but not the
letter, of the law. They expect a further appeal.
Bayerische Motoren Werker Aktiengesellschaft v
Grandmark International (Pty) Ltd and Another (722/12) [2013]
ZASCA 114 (18 September 2013) and see the Afro IP blog here.
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