Bmw vs Grandmark Case Brief

Brand owners have in the past successfully used trade mark law and registered designs to prevent the replacement parts market from using no name spare parts on their cars. But in this particular case it would seem that the rules are slowly beginning to change. Grandmark is a South African company that imports and sells replacement parts, and it has a sizeable business. Grandmark and BMW have a history. “Back in 1999, BMW obtained a consent (uncontested) court order against Grandmark, which prevented Grandmark from infringing certain design and trade mark registrations belonging to BMW. Seemingly unconvinced that Grandmark was complying with the order, BMW obtained a search and seizure order that enabled it to inspect Grandmark's premises. Based on what it found there it went back to court and asked for an order declaring Grandmark to be in contempt of court, and ordering it to stop infringing various registrations belonging to BMW.” (Scott, 2012)

 A design registration protects the physical appearance of an article, typically the shape and/or configuration and/or pattern and/or ornamentation, and, unlike a patent, does not extend to the underlying principle of how the article functions. “The rights conferred by a design registration are governed by the South African Designs Act 195 of 1993 ("the Designs Act").  In terms of the Designs Act, the protection afforded by a registered design relates to a design as applied to an article.” (South African Institute of Intellectual Property Law, 2012)

Intellectual property rights are the rights given to persons over the creations of their minds. They usually give the creator an exclusive right over the use of his/her creation for a certain period of time. “IP is protected in law by, for example, patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create.” (WIPO, 2011)

On the question of trade mark infringement, the court found “Grandmark’s use of...