BMW Big M Dilution
August 9, 2007
I earlier reported on BMW’s battle to sue Nissan Canada for passing off and trade mark infringement in it’s M3, M5 and M trade marks. https://serendipitously.wordpress.com/2007/03/20/big-m-dilution/
The Federal Court of Appeal has ruled that the letter M should be free for other car manufacturers like Nissan Canada to use as they wish, rejecting BMW’s argument that they owned the designators M, M3, M5, and M6, and that to allow Nissan to use these to market their inferior designed cars would erode the value of their brand and cause confusion in the market.
BMW also failed to establish their claim the for depreciation of the value of the goodwill attaching to their registered marks as Nissan’s use of the letter M did not constitute use of a registered trademark. As a matter of evidence they were unable to establish evidence of lost sales or any price reduction.
BMW had spent rather large sums of money marketing the International M Brand, and were grossly offended by Nissan’s ads ‘the M is coming’ displaying cars with the Moniker next to the Nissan logo.
The court’s opinion was that there was no confusion as those who watched the commercial would realise it was an ad for Nissan cars.
Although the Court was prepared to free the letter ‘M’ BMW did succeed in their action for passing off, in that Nissan’s use in the year 2005 of the letter M and the designator M6 as trademarks, which are similar in form to BMW’s trade-marks for similar goods, in the same business, was held to create a likelihood of confusion whether that was Nissan’s intent or not.