Use of BMW roundel

Good day all,
Im looking for information or guidance re the use of the BMW roundel on a model motorcycle I have created.
Long story short I am designing and manufacturing a line of extreme models with a slightly cartoonish/ caricature style to them. Not only am I doing bikes but also rodeo bulls, snowboarders, snowmobiles and many more....
But my question relates to the BMW 1200GS. For context I own an '07 GS, and have been a long term BMW owner in spite of some pretty annoying quirks at times.......

My GS model is a pretty accurate representation of bike and rider with a caricature ( but not stupid) style to it, which everyone who has seen it so far thinks is wonderful and so different that I have applied for design registration in Canada and the US, and the rest of the world will follow shortly.

So that leads me to the obvious question of how to get approval from BMW to use the roundel? I suspect that BMW will not approve my use of the logo because they will not be able to wrap their head around my model concept. Or maybe they do have a sense of humour and will understand my entire extreme model concept.
But in any event I wish to get approval or Im forced to sell the models without any logos on them, but with a sheet of miniature brand decals in the box....what a purchaser puts on the model will be entirely out of my control, so to speak.
Can anyone help me with a direct contact in Germany or even BMW NA? What I don't want is the interminable grief of starting with a receptionist and fighting the corporate system....and having to explain what Im up to 15 times with every phone call.
As an example, I tried Bell Helmets and gave up after 15 minutes of explaining my enquiry to a bunch of accounting clerks...and the media/ marketing people were just bloody arrogant.
Help please
Al Gill
Edmonton Canada

Im reluctant to provide my website at this moment, but I will post a picture of my GS model when I work out how to post from my picture files.
Al Gill

The people at BMW who manage their 'Clubs' efforts (who are part of BMW Classic IIRC) are pretty close to that issue as they get into enforcing the word mark and trademark issues with respect to the club logos. You might start by asking one of the RA or MOA club coordinators for contact info for those people.

Good luck with that! I suspect your odds of getting a license for using the logo on something other than a faithful replica are pretty slim, but there WAS the GS tricycle a decade or so ago. If your models are nice and you can talk to someone with an open mind, you might pull it off.

I would think BMW, like any business, would want something to be in it for them, and that they would have very high standards for who uses it and for what.

I would be very surprised if they would grant you licensing rights for you to use their world famous trademark. Especially for free, and especially for a product over which they have no control.

I also don't think that producing a sheet of miniature brand decals would change anything from a trademark, licensing point of view.

I'm not a lawyer (which seems to be your serious need IMO) but can say that the U of KY band has these T-shirts that have a roundel with colors in the wrong place that get by the radar. The Chinese sell weird roundels on ebay with red black sectors, etc.. Maybe have it made & sold from Hong Kong?
If you "get going" I need one (well, kind of, not really) for my Hallmark glass snow globe with the HD inside! A cousins wife worked there & got a case of them on the cheap after they were out of demand. It makes a zoom-zoom sound (when you touch it or even wave your hand nearby the globe) and would look lots better with a beemer inside! My grand kids like it...

Call bmwusa.com and ask for the legal department. When they ask what the call is about, tell them it is an inquiry about their BMW trademark. You will probably be transferred to their Patent Attorney. The in-house atty will have easy access to top management. Whatever you do, be nice, and don't threaten them. Just get your yes or no.

Including a sheet of decals will result in a Trademark Infringement lawsuit. They will make you so sorry that you included the decal sheet. There is no chance in the world that you could use the Fair Use Doctrine to bail yourself out with.

If you get sued, I suppose you could make the argument that both BMW and you got enriched. BMW got free advertising, and you made a profit. But, in the end, you will still pay dearly. Lawsuits of this type usually have minimum legal fees starting at 250k and go up into the millions (if the case is tried in court). Just because you are in Canada will not make a difference. It will just make it more expensive for you to fight.

If I was in your shoes, I would create the model without any trademarks. On the picture of the model box, I would have a real picture of a BMW bike. You will achieve the same results, as if you had the BMW trademark on the model itself.

Thanks everyone.....
I know this is somewhat of a slippery slope as if they wanted to get mean then there would always be the claim that the model, albeit a caricature is still a copy of the GS, but that's actually an argument they can't win because I'm allowed to make a model of myself and sell it which is what it is...but the roundel is another matter. I certainly want to do what's right, but I also know that it can have a similar' look' but not be BMW. Think the Buzzin Hornets [Benson and Hedges] logos on F1 cars a few years ago to get around the cigarette advertising laws.....they were untouchable at the time.......

I want to include the roundel but I also don't think it will change anything respecting my sales, I just want it to look complete. On my prototype I just painted a blue and white dot and it looked great up to about 6" away, and does the job.....

An interesting FYI relates to hundreds of companies posting their logos on the web, and offering a vector file for people to use. The argument by many is that if someone is going to use my logo, then at least I can somewhat control its proper design, colours and layout. This was pointed out by my local print shop who copy and use vector files from many manufacturers certainly with apparent impunity - they have been doing it for years. Harley, Honda, BMW, Ducati, they have done all of them at some stage.....


I will contact BMW NA and ask for 'legal people' and see where it goes....
thanks again for the advice, its most helpful.
Oh and I will get a picture downloaded/uploaded shortly......
Al

Use of BMW Roundel

Well that got my Friday off to a great $%#@$%^^&% start, didn't it.....????
I phone BMW NA and put on my very best Aussie-tinged accent and gently and very professionally asked to speak to the legal department about seeking approval to use the BMW roundel...."Hello my name is Al Gill and I wish to speak to the legal department respecting........."

A pit bull called Renata called me back a few minutes after my enquiry [she gets points for promptness] and proceeded to tell me in very blunt and aggressive language that the answer was 'NO". I asked her could I explain what I was seeking approval for and she cut me off by saying it didn't matter the answer was "NO'.

I didn't like that much - "it didn't matter, the answer was NO"

Being the gentle soul that I am, I tried again - I thought this corporate drone isn't going to beat me, I'll give here some facts such as Tamiya using the BMW logo on its models since the '60's, and Protar and dozens of other since. And how you can buy thousands of BMW decals world-wide today......But she wasn't to be deterred, the answer without any facts was 'NO'.

So I changed tack and asked if she could refer me to Germany to someone I could talk to, and her answer was classic Corporate-speak...."call "BB-5. I don't know what it means, maybe its a department, but I really cant help you"......Can you give me an address? "NO'; can you give me an email address? - "NO"; can you give me a contact name? - "NO".........there ya have it........

Guess I'll make my models without any brand ID, but give purchasers a list of well-known retailers of BMW decals then they can add their own decals and I've done nothing wrong.

And BMW [and Renata] can sue me.......

I would just use it. You may fly under the radar and they don't notice. If not you get some nasty and threatening letters. So what.

Blacque Jacque Shellacque said:

I would just use it. You may fly under the radar and they don't notice. If not you get some nasty and threatening letters. So what.

Click to expand...

Or...... they could have one of there many corporate lawyers, who spends much of his day playing solitaire, file a law suit. Imagine this... This under employed attorney's boss walks into his cubical and says, " Hey Rudy, here's a file on some guy using the roundel on a model he's selling. Light'um up. No need for this thing ever to get to court, but string it along enough so he has to hire a lawyer and spend a hunk of money responding to our complaints, depositions and discovery.... have some fun."

In a previous life I dealt with complaints from the music industry concerning students sharing copyrighted music online. Most were boilerplate complaints with a routine response by the University I worked for. Once in awhile one of the music industries watchdog groups would file a lawsuit against a student. The letters the student and the University (me) received cited other cases they had filed and won. The amount of money the artists were awarded was astounding. That could be Al's situation should he follow your advice.

All good advice and thanks...I have to admit after the farce today masquerading as meaningful professional dialogue [her not me] my first instinct was to just ignore her and go for it.....I do have one advantage in that the entire operation is under a limited liability umbrella so I'm personally Ok, but that's kinda not the point either, in that I don't want to not do the right thing, but they sure make it hard when one cant even have a conversation about how I should apply...mind you I have always expected a 100% guaranteed negative response, I just didn't expect it that fast. But at least I didn't waste much time trying for that matter.......

What I find truly interesting and somewhat mindless about all this is that to get my models ready for production I purchased about 25 sheets of 1/8 scale decals from all around the world, but mainly from Italy. BMW features interminably on the sheets, time and time again, as do [does] every manufacturer pretty much ever made, going back 50 years or more. So I picked the decals I wanted and added them to the model and ahoy!!! I have what I want [for my prototypes, NOT for production of course].

So here's the technicality? If I buy sheets of decals from the Italian manufacturer and included them in my shipping carton and they are NOT attached to the model what the hell can BMW, or Honda or any other manufacturer do? My lawyer friend says they cant touch me as I didn't manufacture the decals, I didn't attach them to the model, I didn't print them even, and these sheets are readily available on the web......in fact the address is www.spotmodel.com...see how easy it is?

With that being said I am making sure that no manufacturers name appears anywhere on my models, or in the naming or nomenclature for the models, and if someone wants to sue me after all that then go ahead.....I'll welcome the publicity....
Oh and Im still trying to work out how to attach one of the model pictures. If you want to see what Im blathering about, send me a PM and I will share some samples...including the no-name red twin modelled off my personal bike.
Thanks for the input from everyone, I appreciate it.
Al

155767 said:

Oh and Im still trying to work out how to attach one of the model pictures. If you want to see what Im blathering about, send me a PM and I will share some samples...including the no-name red twin modelled off my personal bike.

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If you want me to attach some pictures, send me a PM and we'll exchange email addresses. I can then post them. Or check Post 12 and 13 out in this thread...this provides some of the basics on how I tend to attach photos.

http://forums.bmwmoa.org/showthread.php?72733-How-to-post-on-the-MOA-Forum

Just because your company is a LLC doesn't mean that they will not name you personally in the suit. I have filed a number of Copyright Infringement and Trademark Infringement cases in US Federal Court. In all the cases I have named one or more of the owners along with the employees who did the infringement. After I have bankrupt the company, I then turn my attention to the assets of the named people.

Including the decal sheet with the model will get you sued. It doesn't matter if someone else made them under contract. You included them with the product. Remember that attorneys know little about USC Title 17 law. You really need a Registered Patent Attorney to answer your questions. Remember that a Trademark Infringement case is very expensive to litigate. Additionally, BMW would contact CBP and have your products seized and destroyed at the border. They would also get a TRO and stop any further sales of the product. You are at a serious disadvantage if they sue you.

Here is another idea that might work. You could make a decal with the letters of ("BMW"). Trademarks are separated into 45 categories. Toys would be in a different category then motorcycles. Spend the $250 USD and file the Trademark with the PTO yourself. You would then own the Mark for BMW under the category covering toys. BMW would then have to move to have the PTO invalidate the Mark, which would be very difficult. If BMW sues you, you could counter sue BMW and their attorneys for Malicious Prosecution. That would scare them, and send them running.

akbeemer said:

Or...... they could have one of there many corporate lawyers, who spends much of his day playing solitaire, file a law suit. Imagine this... This under employed attorney's boss walks into his cubical and says, " Hey Rudy, here's a file on some guy using the roundel on a model he's selling. Light'um up. No need for this thing ever to get to court, but string it along enough so he has to hire a lawyer and spend a hunk of money responding to our complaints, depositions and discovery.... have some fun."

In a previous life I dealt with complaints from the music industry concerning students sharing copyrighted music online. Most were boilerplate complaints with a routine response by the University I worked for. Once in awhile one of the music industries watchdog groups would file a lawsuit against a student. The letters the student and the University (me) received cited other cases they had filed and won. The amount of money the artists were awarded was astounding. That could be Al's situation should he follow your advice.

Click to expand...

BMWNA has no standing in Canada. Why the OP called them is puzzling. If they have lawyers, they can keep keep on playing solitaire because they can't practice in any Canadian court without passing the Bar exam for that province. BMW Canada is a small operation which report direct to the fatherland, not BMWNA. I am pretty confident they don't have any bored lawyers on staff sitting around waiting for something to do. Most likely they have a big law firm on retainer who will gladly charge them $700 or more per hour to write a threatening letter. Like the music industry, they will use Bully scare tactics to get you to back down. Whether they follow through is another matter. Canada is not like the US where courts grant humongous awards to a klutz who spills hot coffee on themselves as they pick it up at the drive through! The bullies always win when everyone surrenders just due to the threat of a lawyer getting involved.

It is important to remember that BMW is doing nothing wrong in protecting their corporate identity and logo. They would in fact be remiss if they did not do so. They could be more polite and understanding than it seems they have been, but in the end they are doing their jobs.

155767 said:

Good day all,
Im looking for information or guidance re the use of the BMW roundel on a model motorcycle I have created.
Long story short I am designing and manufacturing a line of extreme models with a slightly cartoonish/ caricature style to them. Not only am I doing bikes but also rodeo bulls, snowboarders, snowmobiles and many more....
But my question relates to the BMW 1200GS. For context I own an '07 GS, and have been a long term BMW owner in spite of some pretty annoying quirks at times.......

My GS model is a pretty accurate representation of bike and rider with a caricature ( but not stupid) style to it, which everyone who has seen it so far thinks is wonderful and so different that I have applied for design registration in Canada and the US, and the rest of the world will follow shortly.

So that leads me to the obvious question of how to get approval from BMW to use the roundel? I suspect that BMW will not approve my use of the logo because they will not be able to wrap their head around my model concept. Or maybe they do have a sense of humour and will understand my entire extreme model concept.
But in any event I wish to get approval or Im forced to sell the models without any logos on them, but with a sheet of miniature brand decals in the box....what a purchaser puts on the model will be entirely out of my control, so to speak.
Can anyone help me with a direct contact in Germany or even BMW NA? What I don't want is the interminable grief of starting with a receptionist and fighting the corporate system....and having to explain what Im up to 15 times with every phone call.
As an example, I tried Bell Helmets and gave up after 15 minutes of explaining my enquiry to a bunch of accounting clerks...and the media/ marketing people were just bloody arrogant.
Help please
Al Gill
Edmonton Canada

Click to expand...

Al,

Why is it necessary to include the Roundel? If I would draw a cruiser MC, most folks would assume it's a Harley. You can draw a modern Zundapp or Condor and be done with it. To the average person, it's a air/oil/cam/wethead BMW. A K-bike variant would look like many bikes......

Including the Roundel is just asking for problems....

Jon

I guess someone should state that BMWNA has no say in this. A decision like this would be made in Germany/the answer would still be the same as it should be.

akbeemer said:

It is important to remember that BMW is doing nothing wrong in protecting their corporate identity and logo. They would in fact be remiss if they did not do so. They could be more polite and understanding than it seems they have been, but in the end they are doing their jobs.

Click to expand...

I agree from a legal standpoint - BMW owns the right to control use of the roundel. The interesting issue, however, is whether BMW is correct from a marketing POV. While allowing others to use the symbol would dilute BMW's control, extended use of the symbol is a form of free advertising for the company; allowing freer use of the symbol puts the roundel out for more people to see in different contexts. This could be a bottom-line benefit for the company.

The BMW clubs people have gone through this several times in the lasts few decades, as BMW has tightened its control. Most have grumbled and complied; however, I think some have de-BMWed their clubs in order to remain more independent. There was lots of discussion both times, and many think BMW has (twice now) been short-sighted in its these decisions.

dbrick said:

I agree from a legal standpoint - BMW owns the right to control use of the roundel. The interesting issue, however, is whether BMW is correct from a marketing POV. While allowing others to use the symbol would dilute BMW's control, extended use of the symbol is a form of free advertising for the company; allowing freer use of the symbol puts the roundel out for more people to see in different contexts. This could be a bottom-line benefit for the company.

The BMW clubs people have gone through this several times in the lasts few decades, as BMW has tightened its control. Most have grumbled and complied; however, I think some have de-BMWed their clubs in order to remain more independent. There was lots of discussion both times, and many think BMW has (twice now) been short-sighted in its these decisions.

Click to expand...

Right on. If someone was trying to sell a knock off car or bike with a BMW logo, that's a an entirely different ball of wax. Selling a handful of toys doesn't compete with BMW, and they likely benefit. These days companies are obsessed with branding. Somehow it's been determined that strong and well known brand names are worth zillions. It's all about the power of marketing, build the illusion that your product is better then the other guys when in fact its not!

So now I am curious. My BMW came with at least 4 rondels. Who owns them, BMW or me? Since they sold it to me, and I think I rightfully own it, am I not free to do with it as I please?