Cease and desist letter from BMW AG, Germany - Advice needed

[KL7773]

Hi all,

I’m looking for some advice regarding a situation with BMW AG and customs, and would really appreciate any guidance.

I run an automotive key supply business in the UK and have been trading for around 5 years. Recently, I placed a routine order from my usual supplier in China, which included around 130 aftermarket BMW remote keys, products I’ve been selling for years without issue.

However, this shipment was handled differently by the supplier. They included separate BMW emblems in the package, not attached to the keys, which was never requested or agreed. As a result, the shipment was stopped by DHL and customs in Germany and the items were destroyed.

Following this, I’ve received a cease and desist letter from a specialist intellectual property (IP) law firm acting on behalf of BMW AG. They are also demanding €8,600 in damages, which they claim is based on an alleged €800,000 value of infringement.

A few key points:
The total value of the goods was only around $1,300 USD
I did not request or intend to receive BMW emblems
The goods never entered the UK and were seized and destroyed in Germany
I have not sold any of these items
I do not sell or advertise branded emblems on my website and never have

I’ve raised this with my supplier, who has admitted it was a mistake at factory level. However, that does not really help my current situation.

I’m struggling to understand how I can be liable for damages here when:

1. I did not request the infringing items
2. I never received or sold them
3. They were destroyed before reaching me

Has anyone dealt with something similar, or have any insight into how enforceable this kind of claim is across borders from Germany to the UK?

I’m considering getting legal advice but wanted to see if anyone in the trade or with IP experience has encountered this before.

Thanks in advance.

 

[Chris Ashdown]

Legal advice from a commercial solicitor is a MUST otherwise you may well end up with even higher costs. many will give you a 30 min talk for free

 

[paulears]

Classic ploy. Their case is based on the loss to them based on the BMW items not sold due to your product usurping it in sales. A bit like how Apple do the same thing with screens and batteries. I suppose their stance is you were selling reverse engineered BMW intellectual property to people who were buying it from you because it was cheaper than the BMW price. To operate, they are clearly designed to mimic BMW's data codes - despite these things being easily discoverable. Their aim would be to prove your 130 devices resulted in their loss of 130 sales at their prices. In a UK court, would that hold up if pushed? Probably not for the figure they are asking, but undoubtedly the court would determine that yes, there would be a figure. You would simply be arguing about how much. The dirty deed was done. DHL are German, BMW are German - so passing through Germany is a bit of a slam dunk. Intent would be proven. I think you have to get proper legal advice because the crime took place in a foreign country - can they claim against a person in a different country? No actual loss occurred to BMW because the shipment was intercepted. Does that mean their damages were minimal? I would think yes, but this sounds really terrible from your end. Common sense means zilch here!

 

[Nico Albrecht]

I think the loose BMW emblems are probably what made customs act quickly, but I would be careful about assuming the emblems are the only issue.

The bigger problem is likely the overall IP position around BMW-compatible remote keys, not just the stickers. Once customs in Germany detained the shipment, this moved beyond a simple shipping mistake and into a formal IP enforcement process. Even though the goods were destroyed and never reached the UK, BMW can still try to pursue a civil claim. Get legal advise

 

[fisicx]

@KL7773 - are they contesting just the emblems or are the keys included in the letter?

If not the keys, have BMW destroyed your legitimate goods?

Either way getting a commercial lawyer on board early is vital. Might cost you a couple of thousand but will be money well spent.

Are you a limited company? If so does your insurance include legal cover?

 

[paulears]

Thinking a bit more - the interesting thing is how they were discovered? What attracted them to the parcel in the first place. Random opening of parcels I was thinking was actually quite rare now. Trade mark infringement comes a poor second to pharmaceuticals, and illegal items triggered by x-ray clues. I import microphones and the most popular ones all look like expensive German ones - however my ones have a square, red applied after manufacture label - it is marked KETS. Fakes have Neumann on their small red label. None of my parcels show any sign of being opened, but wouldn't matter if they were as there's no dodgy branding inside, but I know the factory do ship the same product with the other brand labels on - I could easily get shipped the wrong items and suffer the same fate.

 

[KL7773]

Many thanks for the replies!

@fisicx - I am a limited company yes, but legal fees are not covered.

Would it be sensible to upload some snippets of the letter received? removing some of the more personal details, of course.

I am not sure if I should do this? I've never been in such a situation, and even now I just feel pretty hard done by considering I didn't ask for any of this to happen, nor have I ever sold any items with emblem's or logos. The aftermarket key part is completely 100% legal, it's these emblems they've mistakingly included that's causing this issue!

If someone could clarify if it would be the normal thing to maybe share some of the letter details, I shall promptly upload them here.

Many thanks again, much much appreciated in advance!

 

[Newchodge]

I understand that you did not want/expect the shipment to show BMW emblems. However, how do you sell your product? If a BMW owner needs a new key, how do they know to contact you?

 

[fisicx]

@KL7773 - the letter and its contents need to be passed to your solicitor. First thing Monday morning get on the phone and find someone who can help.

Are you a member of a trade organisation? They might be able to help.

 

[KL7773]

@KL7773 - the letter and its contents need to be passed to your solicitor. First thing Monday morning get on the phone and find someone who can help.

Are you a member of a trade organisation? They might be able to help.

I am not, there is no trade body for what we do. It's quite niche and only a handful of similar business's operate in the same way. I'll be onto a firm (not yet chosen) on Monday indeed. Massive pain, and this has certainly opened my eyes to the amount of trouble one can get into, even when entirely out of their control!

 

[fisicx]

Does the letter refer to the keys or just the emblems?

 

[KL7773]

Does the letter refer to the keys or just the emblems?

Only the emblems

 

[WaveJumper]

They could be just scaring you off however I have seen many in the car 'scene' get into trouble over reprinting automotive logos on all types of products so as advice suggests legal advice is the way to go. Also surprised they not requested all copies of invoices, supplier details etc etc.

You say the keys were not mentioned but were the logos made to be attached to the key fobs by any chance.

 

[FreddyG]

OK, I have to deal with German IP law on a regular basis, albeit in the music biz - but the principles of IP law are the same. Let's get a few things straight here -

1. A UK lawyer is completely and utterly useless and totally irrelevant! We are dealing with German IP law and if any lawyer is required, that lawyer has to be German and if the letter came from a Bavarian legal beagle, must be called to the bar and licensed in Bavaria (home to BMW).

2. Do not ignore it. Germans love a legal battle and things can escalate quickly in Germany.

3. Sign NOTHING! Do not sign a pre-drafted cease-and-desist declaration or anything else. Those can create long-term contractual penalties far worse than the current demand.

4. Stress the following points: You did not request the emblems. The emblems were not attached to the keys. The goods were intercepted before circulation. No sales took place. The true economic scale is trivial.

5. German legal fees are based on the notional dispute value (Streitwert), and are often wildly inflated (here €800,000), so legal fees are derived under German fee tables. The higher the Streitwert, the more the lawyer gets paid!

6. Unfortunately, intent is not required. Under EU trademark law, merely importing goods bearing an infringing mark, even if you didn’t personally order them or fix them to the keys, can be enough.

So far, so good. Those are the legal issues that spring to mind. Now let's look at the practical issues -

A German judgment is no longer automatically enforceable in the UK as it once was, but BMW’s lawyers know that most defendants settle before enforcement is an issue. They would have to get a German judgment first, but enforcing any judgment in the UK under mutual legal recognition agreements is very cumbersome and probably not worth all the effort.

BMW fired a warning shot across your bows. They had to! The problem with IP law is that if you do not protect your IP, by default, it can drift away from remaining your property! For that reason, every minor encroachment gets dealt with as if the world was coming to an end!

If you want me to, I can send you the text of the kind of reply we either send or receive - though I must point out that I am not a lawyer. I can give you the names and addresses of IP lawyers in Munich, as we have legal friends out there.

 

[KL7773]

OK, I have to deal with German IP law on a regular basis, albeit in the music biz - but the principles of IP law are the same. Let's get a few things straight here -

1. A UK lawyer is completely and utterly useless and totally irrelevant! We are dealing with German IP law and if any lawyer is required, that lawyer has to be German and if the letter came from a Bavarian legal beagle, must be called to the bar and licensed in Bavaria (home to BMW).

2. Do not ignore it. Germans love a legal battle and things can escalate quickly in Germany.

3. Sign NOTHING! Do not sign a pre-drafted cease-and-desist declaration or anything else. Those can create long-term contractual penalties far worse than the current demand.

4. Stress the following points: You did not request the emblems. The emblems were not attached to the keys. The goods were intercepted before circulation. No sales took place. The true economic scale is trivial.

5. German legal fees are based on the notional dispute value (Streitwert), and are often wildly inflated (here €800,000), so legal fees are derived under German fee tables. The higher the Streitwert, the more the lawyer gets paid!

6. Unfortunately, intent is not required. Under EU trademark law, merely importing goods bearing an infringing mark, even if you didn’t personally order them or fix them to the keys, can be enough.

So far, so good. Those are the legal issues that spring to mind. Now let's look at the practical issues -

A German judgment is no longer automatically enforceable in the UK as it once was, but BMW’s lawyers know that most defendants settle before enforcement is an issue. They would have to get a German judgment first, but enforcing any judgment in the UK under mutual legal recognition agreements is very cumbersome and probably not worth all the effort.

BMW fired a warning shot across your bows. They had to! The problem with IP law is that if you do not protect your IP, by default, it can drift away from remaining your property! For that reason, every minor encroachment gets dealt with as if the world was coming to an end!

If you want me to, I can send you the text of the kind of reply we either send or receive - though I must point out that I am not a lawyer. I can give you the names and addresses of IP lawyers in Munich, as we have legal friends out there.

Hello,

This would be much appreciated, please do send me through anything you've got. I am actively dealing with this as of this morning.

 

[FreddyG]

A suitable private message sent.

 

[KL7773]

After contacting some very capable firms, I am 4 out 4 that don't want to deal with this, some with no reason, some due to client conflict. I have send an initial email as I need more time on this

 

[Gecko001]

Regarding how customs knew about the BMW emblems. The supplier was a probably selling to a lot of retailers who were selling fake branded key fobs on their own without the remotes, so it was only a matter of time before one shipment was caught and reported. Your shipment was probably one of many shipments that were opened and destroyed as a result.

 

[Gecko001]

After contacting some very capable firms, I am 4 out 4 that don't want to deal with this, some with no reason, some due to client conflict. I have send an initial email as I need more time on this

The way some solicitors do not give a reason for not taking on a client is annoying. What about trying a customs agent? They might point you in the direction of a lawyer who specialises in this type of work.

 

[The Resolver]

I can,t help as to the claim but with them only seeking around £7,500 you either call a possible bluff and be ready to negotiate at much much higher rates should your call fail and they issue in court, or negotiate down now from £7500. But you must take advice from a German lawyer.

Many years ago I worked with a German lawyer on a “Find a Lawyer “ site. I had met him when I was a speaker at the German lawyers annual conference. His site was Jurato.de but this now leads to a anWalt.de . It looks the same service so he must have sold out. i will try and track him down and the service and pm you the details.

As to settling early why not use SMartsettle ONE . See a video here www.tinyurl.com/SS-ONE-demo

 

[JEREMY HAWKE]

Having had a bit of time to study this this afternoon You can. be pretty sure that theire was a BMW logo somewhere on the box

 

[gpietersz]

I understand that you did not want/expect the shipment to show BMW emblems. However, how do you sell your product? If a BMW owner needs a new key, how do they know to contact you?

Lots of high street shops will cut a key and clone an existing fob for most cars. I imagine people would not be looking for someone who does BMW keys, but just someone who does car keys in general (usually the same people who will cut house keys etc.).

 

[WaveJumper]

I'll just throw this in, I have attended many car events over years helping my son who was trading at these. One of the first things that becomes apparent are traders selling a whole range of "merchandise" with various car brands emblazoned on them, and have witnessed many a trader having their whole stock removed by trading standards due too complaints from said manufacture.

There are also several traders offering programming of new car keys and will have on show a range of key fobs on display ie BMW, Ford, Mercedes etc etc which one might assume have not come from the relevant manufacture, of course I could be wrong.

Interestingly we quite often would see one particular trader we knew running around at the end of the day with his laptop trying to sort out someone's newly program key which was not working as it should

So the upshot of my post is you might "getaway" with importing / selling branded merch but sometimes big brother catches up with you.

I am not saying this is what our OP was doing but just post it for reference.

 

[gpietersz]

@WaveJumper Programming new car keys is allowed, AFAIK. it is certainly a widely advertised service and offered by some big chains who would presumably be worth suing if it was possible.

It sounds like the key fobs had marque logos on them? That would be a clear breach of trademark.

I am not saying this is what our OP was doing but just post it for reference.

Although OP was not doing it. The fact that they supplier had BMW emblems to send and accidentally sent them means they were supplying people were doing that (unless it is a supplier who also supplies them under license, of course, but I doubt that).

 

[DontAsk]

Lots of high street shops will cut a key and clone an existing fob for most cars. I imagine people would not be looking for someone who does BMW keys, but just someone who does car keys in general (usually the same people who will cut house keys etc.).

Try going to Timpson for a modern car key. It's more likely specialist automotive key suppliers.

Timpsons do not have the kit to program remote keyfobs.

 

[fisicx]

Our local locksmith won’t touch them. Says they have been stung with poor quality items and trading standards. There are apparently patents which the Chinese happily ignore.

 

[gpietersz]

Try going to Timpson for a modern car key. It's more likely specialist automotive key suppliers.

Timpsons do not have the kit to program remote keyfobs.

Timpsons did programme a Peugeot keyfob for me a few years ago and their website says they will program car keys: "We cut and programme all vehicle keys with remote control." and "Most shops can cut new non-remote car keys later the same day."

If newer cars are more of a problem its yet another reason to prefer older ones! Cars really are being enshitified.

 

[DontAsk]

Timpsons did programme a Peugeot keyfob for me a few years ago and their website says they will program car keys: "We cut and programme all vehicle keys with remote control."

That's not true based on what Timpson told me when I, quite recently, tried to get a new key for Ford Kuga. Not exactly an uncommon car. They recommended a local specialist instead.

 

[gpietersz]

That's not true based on what Timpson told me when I, quite recently, tried to get a new key for Ford Kuga. Not exactly an uncommon car. They recommended a local specialist instead.

It varies with branch? Or Ford might be technically more difficult or have created legal barriers? Timpsons do say that "non-remote" (keyless?) is available at most branches. They did tell me that they could not do all cars.

Some cars might be deliberately more difficult to do: a bit like printers that refuse to use perfectly good third party cartridges.

 

[fisicx]

Some cars might be deliberately more difficult to do: a bit like printers that refuse to use perfectly good third party cartridges.

With our mini you can’t even change the battery on the fob - it has to be reset by a mini dealer. And on the latest mini they tell me unless you have mini app on your phone some car functions won’t work.

 

[gpietersz]

@fisicx how else can they keep extracting money from you for the lifetime of the car? How else can they EOL it when they want to? Otherwise people will keep repairing cars and might keep them going for years too long! You need an app and an internet connected car to track people so you can sell the data. Then a future OTA update can bring you in-car ads (not joking - systems are in development).

 

[Mark T Jones]

I'll just throw this in, I have attended many car events over years helping my son who was trading at these. One of the first things that becomes apparent are traders selling a whole range of "merchandise" with various car brands emblazoned on them, and have witnessed many a trader having their whole stock removed by trading standards due too complaints from said manufacture.

There are also several traders offering programming of new car keys and will have on show a range of key fobs on display ie BMW, Ford, Mercedes etc etc which one might assume have not come from the relevant manufacture, of course I could be wrong.

Interestingly we quite often would see one particular trader we knew running around at the end of the day with his laptop trying to sort out someone's newly program key which was not working as it should

So the upshot of my post is you might "getaway" with importing / selling branded merch but sometimes big brother catches up with you.

I am not saying this is what our OP was doing but just post it for reference.

I'm no expert, but i did discover to my cost that certain BMW keys had a rolling code, meaning that it changes with each use - works once then doesn't

 

[fisicx]

@fisicx how else can they keep extracting money from you for the lifetime of the car?

Remember a little while back when you could only get heated seats on subscription. Think it was GM that came up with that idea!

I recall going to Munich to pick up a new BMW when I was serving in Germany. Despite being mandatory, seat belts were an extra. And the tank had just enough to get to the BMW garage at the gates. If you waited too long to get going it would run out of fuel in the car park.

 

[gpietersz]

Remember a little while back when you could only get heated seats on subscription. Think it was GM that came up with that idea!

It was BMW. It was installed installed in all cars and you could pay upfront or pay a subscription to enable it. The BBC story from the time also shows a screenshot with subscription options for cruise control and other things: https://www.bbc.co.uk/news/technology-62142208

I think we are going to get a huge push to subscription features for cars. Domestic appliances too.

Everyone is taking the most consumer hostile ideas from software an applying them to everything. https://en.wikipedia.org/wiki/You'll_own_nothing_and_be_happy

 

[gpietersz]

which they claim is based on an alleged €800,000 value of infringement.

Over €6,000 per item!