The applicant (Daimler AG) applied for summary judgment against the respondent (Sany Group Co Ltd) in an action for trade mark infringement and passing off. Daimler AG referred to two signs as figurative trade marks, which were protected by national and Community trade mark registrations. The registrations covered goods in Classes 7 and 12, which included machinery, apparatus and vehicles.
Sany had been using a sign as a figurative trade mark in various countries around the world. In the United Kingdom it had applied to register the sign in combination with the word SANY as a trade mark for use in relation to goods in Class 7.
The parties’ marks in question consisted of a circle and three stylised shapes inside the circle. Daimler AG claimed that Sany was selling or threatening and intending to sell vehicles such as cranes, excavators and truck-mounted pumps under and by reference to Sany’s figurative mark, with or without the element SANY. Daimler AG’s case was that such use was or would be an infringement of the rights conferred by the protected trade marks as the use gave rise to a likelihood of confusion on the part of the public, in breach of the Trade Marks Act 1994 s.10(2)(b) and took unfair advantage of, or was detrimental to, the distinctive character or repute of the protected trade marks without due cause in breach of s.10(3) of the Act.
Sany maintained that the infringement and passing off claims should be rejected as there was too low a degree of similarity between its marks and the protected marks and between its goods and those for which Daimler AG’s registration could legitimately be retained. Sany sought part cancellation of Daimler AG’s trade mark registration and questioned whether some of the goods for which the protected trade marks had actually been used were identified in the specifications with sufficient precision.
Geoffrey Hobbs Q.C. decided that the evaluation of similarity for the purpose of determining the claim based on the existence of a likelihood of confusion was indissociable from the evaluation of similarity for the purpose of determining whether the use of S’s mark was in any event liable to be prevented by reference to broader considerations of unfair advantage or detriment under s.10(3). The latter determination was rightly not regarded as appropriate for summary determination. The required assessment would in all relevant respects be more soundly based if it was made in light of the whole of the evidence intended to be adduced at trial. On the information available, it was unlikely that the claim in passing off could succeed if the infringement claim failed.