Commercial Auto Glass (Pty) Ltd v Bayerische Motoren Werke Aktiengesellschaft

BMW, the respondent, is the proprietor of several registered trade marks including the word marks “BMW”, “BM” and “3 Series” in class 12, covering vehicles and parts and accessories. Commercial Auto Glass (Pty) Ltd, the appellant, supplied and fitted unauthorised windscreens for various motor vehicles, including BMW models. In its advertising, quotations, invoices and labels, the appellant described the windscreens using BMW’s trade marks and model designations, for example “BMW E36 3 Series” and “BMW E36 WS”. The windscreens were not manufactured by or authorised by BMW. BMW alleged that this manner of use created the impression that the windscreens were genuine BMW parts or were commercially connected to BMW, thereby infringing BMW’s registered trade marks under s 34(1)(a) of the Trade Marks Act 194 of 1993 and its unregistered well-known marks under s 35. The appellant contended that its use was merely descriptive, intended to indicate compatibility, and protected by the exception in s 34(2)(c).

Leave to appeal was granted. The appeal succeeded only to the limited extent of correcting the form of the order. The appellant was restrained under s 34(1)(a) from infringing BMW’s registered trade marks in relation to windscreens and windows for motor vehicles, and under s 35 from infringing BMW’s unregistered well-known marks E30, E36 and E46. The appellant was ordered to pay BMW’s costs, including the costs of two counsel, both in the application for leave to appeal and the appeal.

The case is a leading South African authority on trade mark infringement relating to spare parts and compatibility advertising. It clarifies the concept of ‘trade mark use’ and confirms that the test is whether the use suggests a material link or provenance from the trade mark owner. It also provides important guidance on the limits of the s 34(2)(c) exception, emphasising bona fides, fairness and the need to clearly distinguish unauthorised goods from genuine parts. The judgment aligns South African trade mark law with European jurisprudence and reinforces protection for well-known unregistered marks.