Infiniti comes up empty in court battle against BMW over letter M
03-19-07, 11:41 AM
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Infiniti comes up empty in court battle against BMW over letter M
Infiniti comes up empty in court battle against BMW over letter M
The Canadian Press
March 17, 2007
(CP) - BMW has prevailed over Infiniti in a court battle over the letter M.
The ruling by Federal Court Justice W. Andrew MacKay found that the use of the letter by Infiniti, the premium brand of Japanese carmaker Nissan, "in form similar to that of the plaintiffs' trademark M alone, and its use of M6 as a package for modifying one of its vehicles, cause confusion in Canada between the sources of the wares of the defendant and the wares of the plaintiffs."
BMW has been adding M badges to souped-up versions of its already high-performance cars since 1978 in Germany and 1987 in Canada, when the M6 arrived, followed by the M3, the M5 and other variants.
The German carmaker argued that these vehicles have come to be known, "particularly by auto journalists and car enthusiasts," as M cars which enhance the image and sales of the rest of its fleet.
Infiniti, meanwhile, registered M45 in 2004 and M35 in 2005 as trademarks for sedans in the middle of its range, and in some advertising has used the letter M alone. It also offered an M6 sport package for its lower-priced G35.
The judge found Nissan "liable, in damages to be determined . . . for the use of the letter M and the descriptor M6, as trademarks for automobiles, parts and accessories, which caused a likelihood of confusion between the sources of its wares and of BMW's."
Nissan was barred from directing public attention to its products in any way likely to cause confusion.
"The defendant is also ordered to deliver to the plaintiffs or to destroy under oath, all literature, invoices, packaging, signs, advertisements, promotional or marketing material, printed or otherwise recorded, in the possession, custody or control of the defendant which may be considered to offend the injunction now granted."
Submissions will be considered later on monetary damages and legal costs.
The Canadian Press
March 17, 2007
(CP) - BMW has prevailed over Infiniti in a court battle over the letter M.
The ruling by Federal Court Justice W. Andrew MacKay found that the use of the letter by Infiniti, the premium brand of Japanese carmaker Nissan, "in form similar to that of the plaintiffs' trademark M alone, and its use of M6 as a package for modifying one of its vehicles, cause confusion in Canada between the sources of the wares of the defendant and the wares of the plaintiffs."
BMW has been adding M badges to souped-up versions of its already high-performance cars since 1978 in Germany and 1987 in Canada, when the M6 arrived, followed by the M3, the M5 and other variants.
The German carmaker argued that these vehicles have come to be known, "particularly by auto journalists and car enthusiasts," as M cars which enhance the image and sales of the rest of its fleet.
Infiniti, meanwhile, registered M45 in 2004 and M35 in 2005 as trademarks for sedans in the middle of its range, and in some advertising has used the letter M alone. It also offered an M6 sport package for its lower-priced G35.
The judge found Nissan "liable, in damages to be determined . . . for the use of the letter M and the descriptor M6, as trademarks for automobiles, parts and accessories, which caused a likelihood of confusion between the sources of its wares and of BMW's."
Nissan was barred from directing public attention to its products in any way likely to cause confusion.
"The defendant is also ordered to deliver to the plaintiffs or to destroy under oath, all literature, invoices, packaging, signs, advertisements, promotional or marketing material, printed or otherwise recorded, in the possession, custody or control of the defendant which may be considered to offend the injunction now granted."
Submissions will be considered later on monetary damages and legal costs.
03-19-07, 12:20 PM
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ahahahahagood one
i did see one of the M35/45 commercial and in the end they just wrote M on the screen and said the Infiniti M
i did think of BMW in my mind at the same time when they mentioned it so maybe there IS an infringement issue here
03-19-07, 04:11 PM
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haha, very clever 
I wonder if Infiniti is going to have to change the name of the entire M range in Canada now, and whether BMW is going to go after Infiniti in the US market as well. It would be kind of strange if they had a car called one thing in Canada and another in the US, but it's happened before. I remember reading the Buick LaCrosse had to change its name in Canada because LaCrosse is French Canadian slang for masturbation, haha
I wonder if Infiniti is going to have to change the name of the entire M range in Canada now, and whether BMW is going to go after Infiniti in the US market as well. It would be kind of strange if they had a car called one thing in Canada and another in the US, but it's happened before. I remember reading the Buick LaCrosse had to change its name in Canada because LaCrosse is French Canadian slang for masturbation, haha
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03-19-07, 04:35 PM
#8
aren't they forgetting about the M30 coupe/convertible?
well, I guess the M1/M1/M3/M5 came before that anyways.
...ouch
well, I guess the M1/M1/M3/M5 came before that anyways.
"The defendant is also ordered to deliver to the plaintiffs or to destroy under oath, all literature, invoices, packaging, signs, advertisements, promotional or marketing material, printed or otherwise recorded, in the possession, custody or control of the defendant which may be considered to offend the injunction now granted."
03-19-07, 07:10 PM
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Last year I posted a thread where I was with a girlfriend and their ad came on T.V "the M by a brand called Infiniti" and she started asking me about the BMW M3.
IMO, this shows their management just does not get the luxury game. This is BASIC issue, we are talking a name here, and they don't understand how important it is in the luxury market.
I must say copying "M" is better than Nissan Fuga.
03-19-07, 09:14 PM
#14
This reminds me of the agreement worked out where Lincoln was allowed to use the LS designation for its midsize sedan...
...while Lexus kept its LS # designations...LS 400, LS 430 etc.
Mercifully the Lincoln name ripoff was a failure, and the car is long since gone. I was not pleased at the debut of the Lincoln vehicle with a similar name...geesh.
...good opportunity now for Lexus to snap up the LS designation once and for all???? Maybe they've already done it? After all, the Lexus ads have been all about "The New LS, Unprecedented"...
Frankly I think the comparson worked against Lincoln because when most people think "LS" they think of Lexus. Or maybe some think of a trim line. Or CLS, lol.
...while Lexus kept its LS # designations...LS 400, LS 430 etc.
Mercifully the Lincoln name ripoff was a failure, and the car is long since gone. I was not pleased at the debut of the Lincoln vehicle with a similar name...geesh.
...good opportunity now for Lexus to snap up the LS designation once and for all???? Maybe they've already done it? After all, the Lexus ads have been all about "The New LS, Unprecedented"...
Frankly I think the comparson worked against Lincoln because when most people think "LS" they think of Lexus. Or maybe some think of a trim line. Or CLS, lol.
Good