Daimler AG v Sany Group Company Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 14 May 2009 |
| Neutral Citation | [2009] EWHC 1003 (Ch) |
| Docket Number | Case No: HC 08 C01251 |
| Court | Chancery Division |
| Date | 14 May 2009 |
[2009] EWHC 1003 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
COMMUNITY TRADE MARK COURT
INTELLECTUAL PROPERTY
Before: MR. GEOFFREY HOBBS QC
(sitting as a Deputy High Court Judge)
Case No: HC 08 C01251
Mr Benet Brandreth (instructed by Jensen & Son) for the Claimant
Ms. Anna Carboni (instructed by Bird & Bird LLP) for the Defendant
Hearing dates: 1 st and 2 nd April 2009
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of the version as handed down may be treated as authentic.
Geoffrey Hobbs QC (Sitting as a Deputy High Court Judge)
This is an action for infringement of registered trade mark and passing off. The Claimant, Daimler AG, relies on the rights to which it is entitled by registration and through use of two figurative trade marks:
The marks are well-known in the United Kingdom. I do not doubt that they are strong marks on account of the distinctive character and reputation they have come to possess as a result of the use that has been made of them. On the information presently available to me, I think it is unlikely that the claim in passing off could succeed if the claims for infringement of registered trade mark failed. I therefore consider that the action should, for present purposes, be regarded primarily as an action for infringement.
In relation to the first of the trade marks shown above, the Claimant relies on the protection conferred by two national registrations and one Community trade mark registration:
United Kingdom Trade Mark No. 586,567.
Filed: 27 June 1938. 1
Class 12: Vehicles for locomotion by land; bathchairs. 2
United Kingdom Trade Mark No. 718,413.
Filed: 28 May 1953. 3
Class 7: All goods included in Class 7. 4
Class 12: Apparatus for locomotion by land, air and water and parts and fittings therefor included in Class 12. 5
Community Trade Mark No. 140,355
Filed: 1 April 1996. 6
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs. 7
Class 12: Vehicles; apparatus for locomotion by land, air or water. 8
In relation to the second of the trade marks shown above the Claimant again relies on two national registrations and one Community trade mark registration:
United Kingdom Trade Mark No. 542,505
Filed: 22 June 1933. 1
Class 7: Agricultural and horticultural machines and parts for agricultural and horticultural machines; boilers for use in agriculture. 9
Class 12: Vehicles for locomotion by land; bathchairs. 2
United Kingdom Trade Mark No. 718,318
Filed: 27 May 1953. 3
Class 7: All goods included in Class 7. 4
Class 12: Apparatus for locomotion by land, air and water and parts and fittings therefor included in Class 12. 5
Community Trade Mark No. 140,277.
Filed: 1 April 1996. 6
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs. 7
Class 12: Vehicles; apparatus for locomotion by land, air or water. 8
I have referred only to the goods for which the protected trade marks are registered in Classes 7 and 12 on the basis that they are the classes which matter for present purposes. Those classes form part of the international system established for the purpose of aligning national practices on classification. The International Union for the Protection of Industrial Property agreed on an international classification system in 1934. 10 Later initiatives at the international level resulted in the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957 (as revised and amended from time to time).
In the United Kingdom the practice under the Trade Marks Act 1938 was, and the practice under the Trade Marks Act 1994 is, to classify goods (and services) in accordance with the prevailing international classification for the purposes of registration at the national level. This has also been the practice of the Community Trade Marks Office with regard to the registration of trade marks at the Community level under the Community Trade Mark Regulation. 11 However, the practice in the Community Trade Marks Office differs substantially from the practice in the United Kingdom with regard to the effect of using wording from the class headings of the international classification when listing goods (or services) for the purposes of registration, as I go on to explain in paragraphs 13 to 16 below. The class headings indicate in broad terms the nature of the goods/services which fall within each class. They are supplemented by a detailed list of goods/services in alphabetical order identifying for each listed item the class into which it falls. In my annotations to the Class 7 and Class 12 specifications of the Claimant's registrations, I have identified the instances where the wording comes from the class headings of the classes concerned. In Chapter 5 of the seventh edition of Kerly's Law of Trade Marks and Trade Names published in 1951 it was observed that the wording of a specification 'may, and often does, follow the words of the title to one of the classes'. The implications of that statement are not clear. It was omitted from the corresponding paragraph of the eighth edition published in 1960.
The Defendant, Sany Group Co. Ltd, is using the following sign as a figurative trade mark in various countries around the world:
In the United Kingdom it has applied 12 to register the sign in combination with the word SANY as a trade mark for use in relation to:
Class 7: Motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); road rollers; excavators; diggers [machines]; hydraulic pumps; concrete pumps; trailer-mounted concrete pumps; truck-mounted concrete pumps; elevating apparatus; mixing machines; concrete mixers [machines]; bulldozers; motor graders; pavers; asphalt pavers; horizontal directional drilling machines; cranes; mixing plants; asphalt mixing plants; concrete mixing plants; pile drills; rotary pile drills; milling machines; mining machines; pumps [machines]; extractors for mines; mine borers; drilling machines; mine-working machines; rail-laying machines; railroad constructing machines; power shovels; road making machines; pumps [parts of machines, engines or motors]; belt conveyors; hydraulic controls for machines; motors and engines; hydraulic components; parts and fittings for any or all of the aforesaid goods in this class. 13
Class 12: Vehicles; apparatus for locomotion by land; buses; lorries; sports cars; motor cars; motor buses; locomotives; concrete mixing vehicles; aerial conveyors; lifting cars [lift cars]; automobile chassis; hydraulic circuits for vehicles; transfer vehicles; asphalt material transfer vehicles; automobile bodies; motors and engines for land vehicles; parts and fittings for any or all of the aforesaid goods in this class. 14
As required by Section 32(3) of the Trade Marks Act 1994, the application was supported by a declaration to the effect that the trade mark was being used by or with the consent of the applicant in relation to goods of the kind specified or that the applicant had a bona fide intention that it should be so used.
On the basis of that declaration and in the light of various other materials relating to the Defendant's present and proposed trading activities, the Claimant maintains that the Defendant is selling or threatening and intending to sell 'vehicles' such as cranes, excavators and truck-mounted pumps under and by reference to the figurative mark shown in paragraph 6 above, with and without the verbal element SANY. It seeks to prevent the Defendant from using that mark with and without the verbal element in the marketing of such goods in the United Kingdom on the basis that such use is or would be an infringement of the rights conferred by the registrations of the protected trade marks:
(1) for giving rise to the existence of a likelihood of confusion 15 in breach of Section 10(2)(b) of the Trade Marks Act 1994 (Article 5(1)(b) of the Trade Marks Directive 16) and Article 9(1)(b) of the Community Trade Mark Regulation;
(2) for taking unfair advantage of, or being detrimental to, the distinctive character or repute of the protected trade marks without due cause in breach of Section 10(3) of the Trade Marks Act 1994 (Article 5of the Trade Marks Directive) and Article 9(1)(c) of the Community Trade Mark Regulation.
Whilst unfair advantage or detriment must be attributable to the existence of a likelihood of confusion in order to be suppressible on the first basis of claim, it need not be attributable to the existence of a likelihood of confusion in order to be suppressible on the second basis of claim. This can make it quite difficult to identify the point at which a claim must either succeed on the second basis or fail altogether in a case such as the present, where the protected trade marks are well-known and the question is whether and, if so, how far the registrations relied on can be asserted against the use of non-identical marks in relation to diverse items of equipment.
The Defendant acknowledges that it has sold and intends to sell construction machinery (including self-propelled and truck-mounted construction machines) in the United Kingdom under and by reference to the marks in question. There is nevertheless an issue between the parties as to how far the Defendant is presently intending to commercialise its marks across the full width of the range of goods...
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