Case Comment: Nissan Canada Inc. v. BMW Canada Inc.

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Case Comment: NISSAN CANADA INC. V. BMW CANADA INC., 2007 FCA 255
In this case, it was stated by the Federal Court of Appeal that in order to establish a mark in
advertisement and other promotional material to be adequately associated with the goods to
constitute use, such advertisements and other promotional material should have been given at the
time of the transfer of property or the possession of the goods in question. It was also stated by
the court. In this case it was stated that a bifurcation order is not going to relieve the plaintiff
from the need for establishing the presence of damages as the element of cause of action in
recourse to passing off.
In the present case, the respondents were BMW owner tried to prevent the Appellant Nissan,
from the display of the letter M. Alone in the advertisements that were related with luxury
automobiles. And, BMW had specifically filed an action on 12 August, 2005 for preventing
Nissan from selling, distributing or advertising the automobiles of on with their parts and
accessories in association with the trademark M and M6. In this case, BMW had relied on
sections 7(b), 20 and 22, Trademarks Act. It was claimed by BMW that the company had been
using trademarks M and M6 in Canada since at least 1987.
In this regard, it needs to be noted that the letter M and combination M6 had not been registered
as a trademarks of BMW in Canada, but application for registration has been filed after these
proceedings were initiated. On the other hand, BMW has registered trademarks for M and
design.

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BMW had been using M brand as its premium brand. This regard, M stands for "motorsport" and
the racing heritage of the company. In case of the M series of auto mobiles, technologies have
been used visual originality developed for the racing cars of BMW. As a result, the company
targeted high-end market segments and also commanded a higher price sales. Therefore in the
opinion of BMW, these special vehicles were known among the public and for being referred to
as M cars not only within the company but also in the market as a result of the sales and
promotional activities of BMW related with these vehicles.
The M6 car, which was also referred to as the M edition of BMWs 6 series was the first M. Car
that has been sold and promoted by BMW in Canada. Later on, it was followed by the series M3,
and M5. Therefore the M cars of the company were marked with M and design mark, but they
were not marked with a standalone M letter mark.
As compared to this situation, Nissan was a licensee of registered trademarks M35 and M45.
That was being used for some of the vehicles falling under the luxury division of the company,
Infinity. The auto mobiles journalists usually refer to these cars as the M cars or the Infinity M
cars but they were not marked with a standalone later M or with any of the trademarks that have
been claimed by BMW. In some advertisement campaigns, that took place in 2005 and 2006, the
letter M, had been displayed by Nissan with great emphasis for the purpose of promoting the
new editions of Infinity M models of Nissan. Within the company, M6 description was used for
designating an optional sports package which provided a manual six speed transmission. This
was available to the buyers of Infinity G35. When the M6 package was introduced by Nissan,
BMW was not selling the M6 cars in Canada, but it had plans for reintroducing the model in
2006.