With regard to the trade mark infringement the Presiding Judge considers that according to art. 12 under c CTMR - BMW based the trade mark claim first of all on its community trade mark rights - a community trade mark shall not entitle the proprietor to prohibit a third party from using the trade mark in the course of trade where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts, unless the trade mark is used in a such way that it may provoke the suggestion that there is a commercial link between the third party and the proprietor of the trade mark, especially if it is suggested that the third party belongs to the distributive system of the proprietor or that there is a special relationship between the third party and the proprietor. The Presiding Judge refers to the BMW/Deenik decision of the ECJ (February 23, 1999, C-63/97). However Inter-Tyre can not appeal to this provision, because the Presiding Judge finds - looking at the website page - that Inter-Tyre does not use the trade mark BMW only to indicate that the wheels are suitable for BMW cars. The website page does not indicate clearly that the wheels do not originate from BMW. The public shall therefore assume that the wheels originate from BMW. This is found to be unlawful use of the trade mark BMW by Inter-Tyre. Because the trade mark is used for identical goods for which the trade mark is registered, BMW is entitled to prohibit this use on the basis of art. 9 par. 1 under a CTMR. The use of the sign 'BMVV' should also be prohibited on the basis of art. 9 par. 1 under b CTMR. Inter-Tyre unsuccesfully argued that there is no risk of confusion, because Inter-Tyre has a focus on wholesalers and second-hand car owners: BMW serves this segment of the market too. Moreover Inter-Tyre did not deny that due the similarity between BMW and BMVV there can be a risk of confusion.

Because an injunction can already be based on the community trade mark the Presiding Judge considers it not necessary to judge the infringement of BMW's Benelux word mark.

With regard to the procedural costs the Presiding Judge denies to award € 26.000 to BMW. With reference to the liquidated rates schedule in IP matters - applicable in the Netherlands for first instance trade mark cases started after August 1, 2008 - the Presiding Judge estimates the costs to be € 15.000, weighing that Inter-Tyre admitted that this was not a 'simple case' and finding unsolid BMW's argument that she had to work on all possible defenses of Inter-Tyre, because Inter-Tyre had not disclosed its defenses beforehand: 'The nature of summary proceedings (kort geding) involves not infrequently an anticipation on positions and defenses of the opponent that are not known beforehand.'

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