This article was first published in the July 2009 edition of the World Intellectual Property Review.
Daimler AG v Sany Group Company Ltd (Mr Geoffrey Hobbs QC;  EWHC 1003 (Ch); 14.05.09)
Geoffrey Hobbs QC (sitting as a Deputy High Court Judge) dismissed Daimler’s application for summary judgment in an action for trade mark infringement and passing off. The Deputy Judge commented that the passing off action was unlikely to succeed if the trade mark infringement case was unsuccessful and consequently focussed his judgment on the issue of trade mark infringement. He dismissed the application in its entirety for a number of reasons.
Daimler owns two UK trade marks and one CTM in respect of each of the signs shown below, the goods for which the marks are registered being specified by giving the Class headings for Classes 7 and 12.
The Defendant, Sany, applied to register in the UK the figurative mark reproduced in relation to certain goods in Classes 7 and 12.
Daimler sought to prevent Sany from using the mark on the basis that such use would give rise to a likelihood of confusion on the part of the public under Section 10(2)(b) of the Trade Marks Act 1994 (“TMA”) and that it would take unfair advantage of or be detrimental to the distinctive character or repute of Daimler’s marks under Section 10(3) TMA. Sany admitted that it had sold construction machinery, including self-propelled and truck mounted machinery, in the UK under its mark but claimed that there was too low a degree of similarity between the marks and too low a degree of similarity between its goods and those for which Daimler’s registrations could legitimately be retained, for there to be infringement.
Sany counterclaimed for partial revocation of Daimler’s trade marks on the grounds of non-use in relation to some of the goods covered by Daimler’s Class 7 and 12 registrations. The Deputy Judge noted that there was a real issue as to the degree of precision with which the retained list of goods should be defined. He had previously expressed the view in WISI Trade Mark  RPC 13 and DATASPHERE Trade Mark  RPC 23 that the aim should be to arrive at a fair specification by identifying and defining not the particular examples of goods for which there has been genuine use, but the particular categories of goods they could realistically be taken to exemplify. This seemed to be consistent with the case law of the CFI (in Mundipharma Case T-256/04; Armour Pharmaceutical Case T-483/04; and Reckitt Benckiser (Espana) Case T-126/03) but it was possible that the two might not fully accord.
The question of the specifications was influenced by two issues of law. Firstly, the specification of goods had to be interpreted as at the date that the trade mark was obtained (this was relevant as some of Daimler’s marks dated back to the 1930s and 1950s). Secondly, there was the question of how to interpret the specification when the mark was registered by reference to the class heading only.
The Deputy Judge observed that, in relation to the latter, there was a divergence of approach between OHIM and the UK IPO. OHIM’s practice is to accept class headings as being claims to registration in respect of all goods within that heading. In contrast, the IPO takes a more literal approach and objects to wide and vague specifications. In his view, there was no room for such divergent approaches to co-exist within the framework established for the co-ordinated protection of trade marks in Member States and at Community level. For the present purpose, it was sufficient to note that there was a real issue which Daimler could not avoid simply by electing on an ad hoc basis not to rely on the broader approach to interpretation.
Daimler’s application for summary judgment was made on the pragmatic basis that the degree of similarity between its marks and Sany’s mark was so great as to justify a finding of infringement by reason of the existence of a likelihood of confusion in relation to such of Sany’s goods as could be correlated with those of the kind for which the protected marks would remain registered in Class 12. Daimler suggested the following list: truck mounted concrete pumps, truck mounted concrete stationary pumps, concrete truck mixers, excavators, hydraulic crawler cranes and truck mounted cranes.
The Deputy Judge refused the application for summary judgment. Firstly, the criteria for determining whether the goods are sufficiently similar to give rise to the existence of a likelihood of confusion had not been settled by the ECJ (or as Mr Hobbs QC put it, it continued to be “somewhat loosely defined”). Secondly, and as part of the first argument, the extent to which Daimler’s marks had actually been used in relation to truck mounted machinery and equipment so as to function as a badge of trade origin in relation to the assembly of the whole was open to question on the evidence. These questions could not be resolved in a summary adjudication. Further, it was an open question whether the similarities between the marks were outweighed by the differences between them. The evaluation of similarity (under both Sections 10(2) and 10(3) TMA) would be more soundly based if it were made in the light of the whole of the evidence adduced at trial. For these reasons the claim was not suitable for summary judgment.
The Deputy Judge considered that there was not room for the divergent approaches of OHIM and the UK IPO to co-exist within the framework established for the coordinated protection of trade marks in the EU. The main trial is listed for July 2009. The High Court may take the opportunity to provide some guidance on this point.