A well-known, different star: Daimler AG and Sany Group Company Limited

On 23 October 2009, the UK section of a multinational trade mark dispute between Daimler AG and Sany Group Limited was decided in Sany’s favour as it was deemed the two marks in dispute were not similar enough.  

Daimler’s “three-pointed star” is the earlier mark and agreed by all parties to be a famous mark.  It has been used by Daimler since 1921, beginning in Europe and subsequently throughout the world, upon vehicles of many kinds.



Daimler AG sought to prevent the use and registration of the Sany mark, also a three-pointed roundel device, which has been used since 1985 upon a range of heavy construction equipment and machinery, beginning in China and subsequently in many other countries.  At the time of delivery of the UK judgement, Daimler had succeeded against Sany in France and Germany, but failed in New Zealand.

UK Part One: Summary Judgement – 14 May 2009
Daimler first attempted to have the matter decided on the basis of infringement and passing off, through Summary Judgement before Mr Geoffrey Hobbs QC, sitting as a High Court judge.  Sany naturally counter-attacked Daimler’s registrations by alleging non-use, in whole or in part, because the Daimler registrations had issued more than five years before and all such registrations are vulnerable to non-use revocation challenge.

The decision of Mr Hobbs QC was issued on 14 May 2009.  He refused to grant Summary Judgement, noting Sany had raised the long-vexed questions of  whether a broad Class heading registration truly covers all goods of the Class, or not, and whether the Community Trade Mark and UK Trade Mark Registries have the same perspective on that point.  Mr Hobbs QC felt that such important issues should not be handled at Summary Judgement.  In addition, he commented that in his view this case rested more on infringement than on passing-off.

UK Part Two: High Court Decision – 23 October 2009
The case was then heard before Ms Susan Prevezer QC, sitting as a Deputy High Court Judge.  By the end of this second stage, the matter was in sharp focus.  Daimler had conceded that its marks had not been used upon some of its registered goods, which were anyway irrelevant to the case.  Daimler also withdrew its claim of passing-off, and restricted its infringement claim purely to Article 9(1)c of the Community Trade Marks Regulation and the parallel words in Section 10(3) of the UK Trade Marks Act 1994, namely that

(3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

However, the action failed because, in the view of Ms Prevezer QC, the marks simply did not meet the required level of similarity, so that the necessary link between Daimler’s mark and Sany’s sign was absent.

Comment
For trade mark practitioners, it is a pity that a case which raised so many interesting points of general interest was ultimately resolved on a simple comparison of two marks.  We still await a final and guiding decision in relation to the precise scope of Class heading specifications.

Meanwhile for car manufacturers and enthusiasts, we have a global “score draw” in this case.  We shall watch with interest to see which other jurisdictions will follow the UK and New Zealand, and which will follow France and Germany.

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