Machinery Manufacturer‘s Victory over Luxury Automobile Company

A recent decision of the New Zealand Court of Appeal (Daimler AG (“Daimler”) v Sany Group Co Ltd  (“Sany”) [2015] NZCA 418) has seen Chinese heavy manufacturing company Sany emerge triumphant from a long standing dispute with automobile manufacturer Daimler, who operates internationally under the Mercedes-Benz brand.

Background

Mercedes-Benz’s three-pointed star trade mark has been used in New Zealand since 1911. Multiple variations of the trade mark have been registered for machinery and vehicles in New Zealand:

Daimler Mercedes-Benz

In 2006, Sany applied to register its trade mark for machinery and vehicles in New Zealand:

Sany

Daimler opposed registration of Sany’s trade mark before the Assistant Commissioner of Trade Marks. The opposition was unsuccessful, so Daimler appealed to the High Court. The appeal was dismissed for a number of reasons, including that Sany’s trade mark was not so similar to Daimler’s trade mark as to be likely to deceive or confuse consumers. Daimler then appealed to the Court of Appeal.

The Court of Appeal’s Decision

It was not disputed that Daimler’s trade mark is well known in New Zealand. The main issue was whether the trade marks were similar, and therefore whether there was likelihood for deception or confusion under section 17(1)(a) of the Trade Marks Act 2002.

Daimler argued that the three-pointed star within the circle was an “essential element and dominant feature” of its trade mark. When comparing this to Sany’s trade mark, the “dominant concepts and visual appearances” of the marks were similar, and therefore confusion or deception was likely.

However, the Court of Appeal reached the same conclusion as the High Court and the Assistant Commissioner, finding that the trade marks were sufficiently dissimilar, both visually and conceptually. Notably, the Court considered that the inclusion of the word “Sany” in Sany’s trade mark did distinguish it from that of Daimler but even without its inclusion there was no risk of confusion as the trade marks were still lacking in visual similarity.

The Court further affirmed that the relevant purchasers or prospective purchasers of goods bearing the trade marks would be discerning and reasonably knowledgeable. Therefore, confusion between the two trade marks was unlikely.

This case is one part of a wider global dispute between Daimler and Sany over the use and registration of Sany’s trade mark and it is interesting to note the divergence in outcomes of the various international courts and trade mark offices. This is a reflection of the differences in the individual laws and practices of each jurisdiction.

Conclusion

 Ultimately, this case is an uncomplicated exercise in the comparison of two trade marks. A range of arguments was raised by Daimler and Sany to support their respective positions, but as is apparent from this decision, long-standing and basic concepts of trade mark law can still be strong grounds for opposition.