Case Notes: Aesthetic design rights to spare parts? Bayerische Motoren Werke Aktiengesellschaft v Grandmark International (Pty) Ltd

• Jurisdiction: South Africa
• Author: Mikhalien du Bois
• Published date: 25 May 2019
• Pages: 84-93
• Date: 25 May 2019

AESTHETIC DESIGN RIGHTS TO SPARE

PARTS? BAYERISCHE MOTOREN WERKE

AKTIENGESELLSCHAFT v GRANDMARK

INTERNATIONAL (PTY) LTD

MIKHALIEN DU BOIS

Senior Lecturer, University of South Africa

COENRAAD VISSER

Professor, University of South Africa

These were the facts before the court in Bayerische Motoren Werke

Aktiengesellschaft v Grandmark International (Pty) Ltd and Another

(50212/2010) 2012 ZAGPPHC 139 (25 July 2012): Bayerische Motoren

Werke Aktiengesellschaft (‘BMW’) is a German company that, by itself

and through licences, develops, manufactures, and distributes BMW

motor vehicles, and their parts, components, and accessories. Grand-

mark International (Pty Ltd) (‘Grandmark’) is a South African company

that imports, sells, and offers for sale spare parts for motor vehicles,

including BMW vehicles. Allan Ho is the sole director, sole shareholder,

and managing director of Grandmark. Needless to say, he was respon-

sible for the control, management, and business operations of the

business (para 11).

The parties have a long history of adversity. In 1999, Van Dijkhorst J

granted an order restraining Grandmark from infringing certain regis-

tered designs and trade marks of the applicant’s in relation to parts made

to f‌it BMW motor vehicles (the relevant parts of the order are cited in

para 2). (This order was obtained by agreement between the parties, and,

according to Ranchod J in the judgment here under review, ‘without the

dispute having been fully ventilated in a trial or full blown application

hearing before the court’ (para 8).) In April 2010, BMW lodged a

complaint under the Counterfeit Goods Act 37 of 1997. Under a warrant

in terms of the Act, off‌icials of the Department of Trade and Industry

and off‌icers of the South African Police Service entered the premises of

Autofever Motor Corporation (Pty) Ltd (‘Autofever’), and seized parts

for BMW vehicles. Various f‌inancial records and documents were also

seized and copied; they included invoices from various suppliers of parts

to Autofever. Several of these invoices were issued by Grandmark.

84

(2013) 25 SA Merc LJ 84

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