• by Steve McClellan  @mp_mcclellan, February 1, 2013

WPP’s Grey Global Group has been slapped with a trademark infringement lawsuit in connection with a marketing campaign it developed for client BMW.  

The plaintiffs, Car-Freshener Corp. and Julius Samann Ltd. (JSL), have asked the U.S. District Court for the Southern District of New York for an injunction barring Grey from using the infringing marketing materials. The companies also seek damages “in an amount to be proven at the time of trial.”

Earlier this week, Grey filed court papers denying culpability, citing a contract with two other firms that Grey said claimed to have the trademark rights to the marketing materials at issue. Those firms -- Another Dancing Bear Productions and Scent USA -- also indemnified Grey from any legal claims that might arise from the use of the materials, Grey asserted.

The ad agency asked the court to dismiss the charges against it and hold ADBP and Scent USA liable for any trademark violations that the court finds occurred. Grey also argued that Car-Freshener and JSL weren't entitled to damages because they had not demonstrated that they were actually harmed by their client's use of the marketing materials.

The action stems from a 2011 ad campaign that Grey developed for BMW’s line of “Certified Pre-Owned Vehicles.” As part of the campaign, Grey worked with ADBP and Scent USA to develop specially designed car air fresheners that hang on rear-view mirrors. The BMW air freshener tags used an evergreen tree logo that Car Freshener Corp. and JSL alleged was “confusingly similar” to their own trademarked tree logo.

In addition to the tree logo, the freshener tag designed for BMW had the message: “There isn’t anything we don’t do to ensure Certified Pre-Owned BMWs are like new.” The tree logo was imprinted with the slogan “New Car Smell,” and BMWs own logo was printed on the fresheners.

ADBP and Scent USA have not yet replied in court to Grey’s filing.

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