Court of Appeal Considers Daimler’s Mercedes Device Appeal Pointless

Having a well known device mark didn't assist Daimler when other mark held to be insufficiently similar...

In Daimler AG v Sany Group Co Ltd the Court of Appeal did not uphold Daimler’s appeal of a High Court judgment which upheld the Assistant Commissioner of Trade Marks decision to accept Sany’s application.

Sany’s trade mark application for a device mark featuring three pointed elements piercing a circle above the word SANY, where the base of each point is non-intersecting and slightly off-centre. Daimler opposed on the basis of its ‘Mercedes’ marks comprising a circle containing three pointed elements (in the same orientation as the Sany device), where the base of each point is mutually intersecting and centred within the circle. In keeping with its initial opposition grounds, Daimler alleged that Sany’s mark would be likely to deceive or cause confusion; is contrary to New Zealand law; and would be likely to be taken as indicating a connection in the course of trade with Daimler’s well known marks and that this would be likely to prejudice Daimler’s interests.

In the High Court the Judge considered that Sany discharged its onus of establishing that there was an absence of confusion or deception, even when taking into account transactions across world markets. In comparing the marks the Judge held that, even if the presence of SANY in Sany’s device mark is ignored, both visually and conceptually the device marks are dissimilar. Daimler’s marks were held to be well known in New Zealand, but, in the absence of sufficient similarity between the marks, this was held not to be of any assistance to Daimler’s case.

The Court of Appeal agreed with the High Court’s assessment that for the respective marks the differences outweighed the similarities and that one mark does not suggest the other. The simplicity and symmetry of Daimler’s device mark were distinguishing features, which contrasted with Sany’s complicated asymmetrical device, which was suggestive of rotational movement. The possibility of confusion was found to be further reduced by the likelihood that prospective purchasers of either party’s products would be discerning and reasonably knowledgeable. The Court of Appeal also found that even when taking into account fair and notional use rather than just actual use, this did not alter the conclusion that the respective marks are not similar and that use of Sany’s mark is not likely to deceive or confuse.

As with the High Court the Court of Appeal considered that the extra protection given to well known marks was not engaged when the marks are not sufficiently similar. This was held to be the case even on the lesser requirement of only requiring an essential element of Sany’s mark to be identical or similar to Daimler’s well known mark.

Author: Quinn Miller

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