We represented luxury car manufacturer BMW in a trade-mark action over BMW's iconic "M" trade-marks. At trial, we obtained an injunction against Nissan's use of "M" and "M6" in association with its luxury vehicles. The decision was reversed on appeal.
Dimock Stratton represented BMW Canada and BMW AG in a trade-mark action against Nissan over the letter “M” used in association with luxury performance vehicles. At first instance, our lawyers were successful in showing that BMW had trade-mark rights to the letter “M” used with automobiles, parts and accessories. In its decision, the Federal Court held that BMW's trade-mark rights under section 7 of the Trade-marks Act were violated by Nissan’s use of the trade-marks M and M6 by Nissan’s luxury division, Infiniti, and enjoined Nissan from using the trade-marks.
In the action, BMW alleged that Nissan had breached BMW’s trade-mark rights under sections 7, 20 and 22 by using the trade-mark M to advertise and direct public attention to its luxury Infiniti automobiles, and by using the mark M6 for its sports packages also used with its automobiles. BMW asserted several M trade-marks in the suit, including M, M3, M5, M6, and M & Design, in association with automobiles, parts and accessories, which are used by BMW in association with its high performance cars.
To make the case under section 7, BMW led evidence to show that the M trade-mark is known among auto journalists and luxury high performance car enthusiasts and had developed goodwill and a reputation amongst these groups. In the trial decision, the use by Nissan of the M and M6 marks were found to create a likelihood of confusion between the wares of Nissan and BMW. The Court held that Nissan’s activities caused a likelihood of confusion and violated BMW’s rights in the trade-marks M and M6, contrary to section 7(b) of the Trade-marks Act. At the same time, the Court dismissed the allegations under sections 20 and 22.
On appeal, however, the Federal Court of Appeal held that the lower Court had erred by accepting that damages were presumed to have been suffered by BMW as a result of the infringing activity of Nissan. The Court of Appeal held that there was insufficient evidence of damages suffered by BMW to satisfy the test under section 7(b) of the Trade-marks Act, which requires actual or potential damage as a necessary element of passing off.
BMW Canada Inc. v. Nissan Canada Inc., Federal Court Action T-1395-05
Nissan Canada Inc. v. BMW Canada Inc., Federal Court of Appeal File A-3-07