Verimark (Pty) Ltd v Bayerische Motoren Werke Aktiengesellschaft

BMW AG is the proprietor of the well-known BMW logo, registered inter alia in class 3 (polishes and cleaning preparations) and class 12 (motor vehicles). Verimark (Pty) Ltd marketed and sold ‘Diamond Guard’ car care products through direct-response television advertising, packaging, and internet material. In these advertisements, BMW vehicles were used to demonstrate the effectiveness of Diamond Guard, with the BMW logo clearly visible on the vehicles. BMW contended that this use constituted unauthorised trade mark infringement under s 34(1)(a) and s 34(1)(c) of the Trade Marks Act 194 of 1993, alleging both primary infringement and dilution. The High Court granted an interdict in respect of the class 3 (polish) mark but dismissed the claim relating to the class 12 (car) mark. Both parties appealed to the Supreme Court of Appeal.

The appeal by Verimark was upheld and the cross-appeal by BMW dismissed. The High Court’s order was amended to dismiss BMW’s application in its entirety, with costs including the costs of two counsel.

This decision is a leading South African authority on the requirement of ‘trade mark use’ for infringement under s 34(1)(a) and clarifies the scope of anti-dilution protection under s 34(1)(c). It aligns South African law with European jurisprudence by emphasising consumer perception and the badge-of-origin function of trade marks, and it limits overbroad claims based on incidental or descriptive use of well-known marks.