Bayerische Motoren Werke AG v Electracom Pty. Ltd. [2021] NZIPOTM7 (30 April 2021)

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Electracom Pty Ltd (“Electracom”) sought to partially revoke (cancel) New Zealand Trade Mark No. 1017040 in the name of Bayerische Motoren Werke AG (“BMW”) on the basis of non-use.

The registration in question covered the following trade mark:

The revocation action related to the following goods only (“the relevant goods”):

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking  (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing apparatus and computer; fire-extinguishing apparatus.

In seeking to have the relevant goods revoked, Electracom asserted that for a continuous period of at least three years, the mark was not put to genuine use by BMW in New Zealand, in connection with the relevant goods, and that as a result, the mark should be revoked for non-use. 

Electracom also referred to the statement of goods as “avaricious” as it is so broad that it essentially includes archaic goods which no company currently sells such as “phonographic pick-ups” and “pince-nez”.

BMW opposed the revocation action and submitted a large amount of evidence in support of their case. However, the evidence showed use of the mark in the following form:

As such, the first issue for consideration was whether use of the mark with the letters BMW, constituted use of the registered mark (which did not contain the letters BMW).

The Hearings Officer initially had reservations about whether the addition of the letters BMW can be considered an element that does not alter the distinctive character of the registered mark.

However, it was noted that BMW owned a New Zealand registration for the logo containing the letters BMW, in connection with the same/similar goods in class 9. As such, it was ultimately decided that use of the logo with the letters BMW did constitute use of the registered mark, by virtue of s7(3) of the Trade Marks Act 2002, which states:

The use of the whole of a registered trade mark is also a use of any registered component part of a trade mark registered in the name of the same owner.

The second issue for consideration was which of the relevant goods BMW had used the mark on.

In their written submissions, BMW acknowledged that there had been no use of the trade mark on “magnetic data carriers, recording discs, mechanisms for coin operated apparatus, cash registers, calculating machines and fire extinguishing apparatus”. However, it also argued that there was no justification for further restriction of the relevant goods, considering the diverse range of goods the mark was used on.

However, the Hearings Officer was of the opinion that BMW had use on the following goods only:

  • Charging stations and systems for electric vehicles;
  • Phone and tablet cables, connection and cables;
  • iPad holders;
  • Cases for eyewear; and
  • Cases for electronic keys.

As a result, the Hearings Officer ruled to maintain the registration for the following class 9 goods only:

  • Accessories for use with photographic, cinematographic, optical, and signalling apparatus and instruments, including cables, connectors, adaptors, cradles, holders and cases for communication and entertainment devices;
  • Accessories for use with apparatus for recording, transmission or reproduction of sound or images, including cables, connectors, adaptors, cradles, holders and cases for communication and entertainment devices;
  • Cases for eyewear and for electronic keys; and
  • Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity associated with vehicles, including charging stations.

The full decision can be read here: http://www.nzlii.org/nz/cases/NZIPOTM/2021/7.html

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