Background

There already is a “MINI” car on the market and it’s popular, so why not link it to our new “Mini” series of electronic scooters? And so they did. Chinese manufacturer Ninebot (Tianjin) Tech Co., Ltd. (“Ninebot”), which acquired U.S. scooter company Segway in 2015, allegedly produced a promotional video prominently featuring German car manufacturer BMW’s iconic „MINI“ cars and trademarks next to its own electronic scooter called the „Ninebot Mini Pro“. Ninebot’s European distributor, KSR Group GmbH, the defendant in the Hamburg court proceedings, also offered a “Mini Street”, “miniLITE” and “ninebot one” electronic scooter.

In the video, a young man exits a futuristic city building on his “Ninebot Mini Pro” electronic scooter which he steers with his knees. He stops at a parking lot where only “MINI” cars are lined up. The camera zooms in when he touches the famous “MINI”-wings logo to open the trunk of his car and stores his electronic scooter inside the car. The future of mobility, the perfect combination of “MINI” car and “Ninebot Mini Pro” scooter?

Not in the eyes of BMW. The reputed German car manufacturer faced KSR Group GmbH in court, Ninebot’s European distributor, and argued that the use of the sign “MINI”, “mini”, “Mini” and/or “one” for Ninebot’s electronic scooters and in the promotional video violated its trademark rights. The signs identify the product and serve as an indication of origin. Ninebot purposely chose to feature “MINI” cars and the famous “MINI”-wings logo in its video to benefit from the outstanding repute of BMW’s trademarks.

Decision

The District Court of Hamburg agreed. Ninebot used the terms “MINI”, “Mini”, “mini” and/or “one” as a trademark and in a non-descriptive manner. In comparison to other electronic scooters on the market, Ninebot’s “Mini” scooters are not small in size. A device with only one wheel (“ninebot one” electronic scooter) may be referred to as “unicycle”, “one wheel”, “monowheel” or “solowheel” but not simply by the term “one”. The relevant public is used to the combination of the manufacturer’s trademark (“Ninebot”) and the (secondary) trademark that identifies the product (“Mini Pro”, “Mini Street”, “Mini Lite” and/or “one”). Last but not least, KSR Group GmbH took unfair advantage of the repute of BMW’s famous “MINI”-wings logo when it featured the logo in its promotional video with a “Ninebot Mini Pro” slogan embedded in the top left corner of the video. The decision against KSR Group GmbH is not yet final.

Penned by Tobias Schonberger of Klaka