BMW vs. Nissan: Passing Off in the Fast Lane


2003_bmw_m3_csl_03_m.jpgA trade-mark battle over the letter “M” has finally made its way through court, resulting in an injuction against Nissan Canada for passing off.  The Federal Court has issued its decision in BMW Canada Inc. vs. NISSAN Canada Inc. in March 2007.  BMW sued Nissan for infringement of its “M” family of trade-marks, alleging that the use of the letter “M” by Nissan in connection with its Infiniti luxury cars constituted trade-mark infringement and passing off.  BMW’s lawyers compiled survey evidence to show the extent of the reputation of the “M” trade-mark in Canada.  The Court was not convinced that Nissan’s use of the letter “M” met the test for infringement, but agreed with the allegation regarding passing off.  There is a three-part test for passing-off :

  • the existence of goodwill,
  • deception of the public due to a misrepresentation and
  • actual or potential damage to the plaintiff.

The judge was convinced and issued an order to stop Nissan in its tracks.  Nissan promptly applied for a stay of the injunction.

The lessons for business?  Trade-mark searches will uncover potential issues with competitor’s marks and experienced counsel can assist in interpreting the search results and providing guidance.  The cost of rebranding (let alone damages) makes a trade-mark search look like a pretty good preventative measure.


Calgary – 15:50 MST

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