ARTICLE · 28 SEPTEMBER 2017

An Accurate Description Of Services As A Defence To Infringement

Goldman Sloan Nash & Haber LLP

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A recent decision of the English Court of Appeal considered a defence alleging informative use of a third party's trademark.

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A recent decision of the English Court of Appeal considered a defence alleging informative use of a third party's trademark.

The Facts

BMW is a well-known manufacturer of motor vehicles. BMW owns the following trademarks:

(1) A Community Trade Mark in the letters BMW ("the BMW Mark"), registered in association with, among other things, "maintenance and repair of cars, motors, engines and parts of these goods; cleaning of automobiles; installation services"."

(2) A Community Trade Mark ("the Roundel"), a design mark as shown below:

The Roundel is registered in association with, among other things "maintenance and repair of cars, motors and engines and parts of these goods; cleaning of automobiles; installation services".

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