BIG M DILUTION
March 20, 2007
This isn’t about the brand power of ciphers, flavoured milk, or really long highways………It is about the use of alpha numeric designators in association with cars in advertising campaigns. BMW say the use of the letter M has become associated with their M series of high performance cars.I must be more confused than the average consumer as I always thought that Big M was a groovy pink flavoured milk drink.
BMW say they have invested 260 million dollars in their M series of high performance cars.
BMW argue they were the first to employ the M moniker in association with the use of cars.
BMW successfully sued Nissan for passing off and trade mark infringement in it’s M3, M5 and M trade marks.
BMW claimed Nissan’s advertising campaign for its M35 and M45 featuring “the M is coming” infringed their intellectual property rights in the letter.
BMW had earlier failed in attaining an interlocutory injunction in the Federal Court of Canada restraining Nissan from using the trade mark ‘M’ in association with Nissan’s Infiniti cars, and also using ‘M6’ in association with Nissan’s M6 sport package option. BMW said the latter use causes confusion between the Nissan M6 and their M6 coupe.
BMW’s argument was that their M sub brand would be tarnished if it became associated in the minds of the public with the more inferior Infinitis, and therefore this dilute their trade marks. BMW claimed 260 million dollars had been invested in promoting their M series of high performance M cars.
Federal Court Justice Andrew MacKay held that the use of the letter in form similar to that of BMW’s trade mark M alone and the use of M6 caused confusion in Canada amongst consumers between the sources of both cars.
BMW has been using M badges since 1978 in Germany and 1987 in Canada and they say their high performance cars have become known as “M cars”.
Nissan had registered M45 and M35 as trademarks for their sedans, but it wasn’t the ownership fo the trade marks per se that BMW objected to.
Rather it was the use of the letter M alone in advertising and the offering of the M6 sports package for it’s G35 BMW took objection to.
The judge found Nissan liable for the use of the letter M and the descriptor M6 as trade marks which caused a likelihood of confusion as to the source or origin of the cars amongst consumers.
Infiniti had earlier sued Audi for the same type of behaviour