Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA)

Verimark (Pty) Ltd v BMW AG 2007 (6) SA 263 (SCA)

Facts

Verimark (Pty) Ltd (Verimark) was a South African retailer that sold car care products. Verimark produced a television advertisement for its car care products in which it used a depiction of a BMW vehicle. The advertisement showed the BMW vehicle being set on fire, but the Verimark products were able to prevent the fire from damaging the vehicle.

BMW AG (BMW) was the German manufacturer of BMW vehicles. BMW sued Verimark for trade mark infringement. BMW claimed that Verimark's use of the BMW trade mark in the advertisement was unauthorized and that it was likely to cause confusion among consumers.

Issues

The main issue in the case was whether Verimark's use of the BMW trade mark in the advertisement constituted trade mark infringement.

Reasons

The Supreme Court of Appeal (SCA) held that Verimark's use of the BMW trade mark in the advertisement did not constitute trade mark infringement. The court reasoned that Verimark's use of the BMW trade mark was bona fide and that it was unlikely to cause confusion among consumers.

Bona fide use

The SCA explained that bona fide use of a trade mark is a defense to trade mark infringement. The court found that Verimark's use of the BMW trade mark in the advertisement was bona fide because Verimark was using the trade mark to indicate that its products were compatible with BMW vehicles.

Likelihood of confusion

The SCA also explained that trade mark infringement occurs when the use of a trade mark is likely to cause confusion among consumers. The court found that it was unlikely that Verimark's use of the BMW trade mark in the advertisement would cause confusion among consumers because the advertisement clearly showed that the BMW vehicle was not being damaged by the Verimark products.

Conclusion

The SCA dismissed BMW's appeal and ordered BMW to pay Verimark's costs.

Summary

The case of Verimark (Pty) Ltd v BMW AG (2007 (6) SA 263 (SCA)) is a landmark case in South African trade mark law. The case is particularly important for its analysis of the following issues:

• The concept of bona fide use of a trade mark; and
• The concept of likelihood of confusion in trade mark infringement cases.

The SCA's decision that Verimark's use of the BMW trade mark in the advertisement was bona fide is significant. The decision means that businesses can use the trade marks of other businesses in their advertising if they are doing so to indicate that their products are compatible with the products of the other business.

The SCA's decision that it was unlikely that Verimark's use of the BMW trade mark in the advertisement would cause confusion among consumers is also significant. The decision means that businesses have greater freedom to use the trade marks of other businesses in their advertising, provided that they do not create a risk of confusion among consumers.