Daimler loses its High Court trade mark infringement action against Sany

23 October 2009

Judgment delivered today in Daimler AG v Sany Group Co Limited

International law firm Bird & Bird represented Sany Group Co. Limited (“Sany”) in defending English High Court proceedings for trade mark infringement brought against Sany by Daimler in respect of its famous 3 pointed star mark.

                            

Images: Sany Logo above left, Daimler logo above right.

Daimler claimed that the use by Sany of its logo on construction machinery such as diggers, cranes and concrete pumps infringed the UK and Community trade mark registrations for the world famous Daimler mark. The Daimler mark was registered for, amongst other things, “vehicles”.  Daimler also alleged passing off.

Sany is a Chinese based manufacturer of construction machinery which sells products in over 100 countries worldwide.  Its annual sales in 2007 were over £1 billion.

In its defence Sany argued that their use did not give rise to any likelihood of confusion with respect to Daimler’s mark and that purchasers seeing the Sany logo on construction machinery would not link it to Daimler’s mark. Sany also claimed as part of its defence that the Daimler trade mark registrations should be partially revoked for non-use as they had not been used for the types of construction machinery sold by Sany. 

During the Trial which took place in July 2009, Daimler dropped its passing off claim.  Daimler also dropped its trade mark infringement claims except that the use of the Sany logo created a link in the mind of the consumer which took unfair advantage of the distinctive character and repute of the Daimler mark.

Deputy High Court Judge, Sue Prevezer QC, held there was no trade mark infringement on this remaining ground as no link in the mind of the consumer was established. She held that when the average consumer looks at the Sany logo, the 3 pointed star mark was not brought to mind. She went on to decide that even if this were not the case she would not have found that the use by Sany took unfair advantage of the distinctive character or repute of the Daimler brand.

Bird & Bird IP partner, Peter Brownlow, who acted for Sany, commented:

“We are very pleased to have achieved this result for Sany.  This is one of the first English High Court cases to apply the recent ECJ decision in L'Oreal v Bellure in assessing how far trade mark protection extends for marks with a reputation.”

The Deputy High Court Judge did not partially revoke Daimler registrations for non-use, as she held that “vehicles” were a fair description of the goods for which the marks had been used.

This is the second reported Judgment in these proceedings.  In May 2009, Geoffrey Hobbs QC sitting as a Deputy High Court Judge, dismissed an application for summary judgment brought by Daimler in respect of their likelihood of confusion trade mark infringement claim.

Peter Brownlow led the Bird & Bird team representing Sany, which also comprised Nick Aries and Hilary Atherton. Roger Wyand QC of Hogarth Chambers and Anna Carboni of Wilberforce Chambers were the barristers acting for Sany.

Ends-

For more information please contact:

Allison Reid or Ben Girdlestone
Tel: +44(0)20 7982 6079/ +44(0)20 7982 6470
Email:
allison.reid@twobirds.com / ben.girdlestone@twobirds.com

Notes to Editors

Bird & Bird is an international legal practice comprising Bird & Bird LLP and its affiliated businesses, and has offices in Beijing, Bratislava, Brussels, Budapest, Düsseldorf, Frankfurt, The Hague, Helsinki, Hong Kong, London, Lyon, Madrid, Milan, Munich, Paris, Prague, Rome, Shanghai, Singapore, Stockholm and Warsaw.