FOX’S ‘ALITA: BATTLE ANGEL’ HIT WITH TRADEMARK LAWSUIT
Car manufacturer BMW prevails against the Finland-based rim manufacturer Vannetukku.fi Oy using signs similar to world-famous automotive trademarks of BMW for car parts (Decision of the Regional Court of Frankfurt/Main, case No 2-06 O 169/17, 28 January 2019).
Car manufacturer BMW claims that Vannetukku has infringed BMW’s trademark “BMW” Logo by using the logo “Blaukreuz” and the trademarks “M4”, “M5” and “M6” as regards the product labels “Mi4”, “Mi5” and “Mi6”. Pursuant to BMW’s position, Vannetukku’s “Blaukreuz” logo and the sings “Mi4”, “Mi5” and “Mi6” are each not sufficiently different from BMW’s trademarks.
Obviously, Vannetukku´s strategy is to be very close, but avoid infringement of the car industry´s famous trademark. Vannetukku not only infringes BMW’s mark but beyond that adapt well-known automotive marks systematically as model for their own brand series in order to increase own sales:
In case of BMW, Vannetukku attracted the attention of the car manufacturer BMW by offering rims for BMW vehicles featuring the logo “Blaukreuz” and the product labels “Mi4”, “Mi5” and “Mi6”:
At least in case of BMW AG, Vannetukku´s strategy proves unsuccessful, as the Regional Court of Frankfurt/Main recently confirmed. It takes the view, that Vannetukku has chosen its product labels to provoke a likelihood of confusion with BMW’s marks and, moreover, to purposely benefit from the outstanding repute of BMW‘s trademarks in the automotive sector. The “BMW” logo is one of the most valuable and well-known trademarks world-wide, as well as the trade mark series “M4”, “M5”, “M6” with the element “M” and an added Arabic number that indicates one model of BMW’s famous “M” sports car series since decades are famous for cars. .
The overall impression of the “BMW” logo is decisively shaped by the figurative element, the white and blue sectors enclosed by a black circle. Furthermore, the Court found that BMW’s marks “M4”, “M5”, and “M6” are each well-known trademark for vehicles as BMW has been using these trade marks for many years on a very large scale. By advertising rims under the sings “Mi4”, “Mi5”, and “Mi6” Vannetukku had taken unfair advantage of the reputation of the well-known trade marks “M4”, “M5” and “M6”.