Mercedes-Benz gears up for logo showdown
Century-old emblems are a gold standard for brands, so it's no surprise that the lucky few to possess such enduring marks will strive against all odds to protect them.
But how strong are they really when companies work together to create a new product that uses both brands?
And, critically, how far can these venerable marks stretch when they appear in entirely new markets such as the digital landscape, including video games?
Mercedes Benz— arguably best known for its luxury cars— is testing these exact questions in its lawsuit against Lenovo, filed last week at US District Court for the District of North Carolina.
History of mark
The German-based company is taking aim at the US-Chinese computing tech firm in a complaint that alleges infringement of its three-pointed star logo.
Mercedes alleges that the logo that Lenovo uses to market its Legion gaming computers is “confusingly similar” to Mercedes’ own 114-year-old emblem.
According to its website, the company’s founders, the Daimler brothers, used an 1872 postcard from their father as inspiration for the logo. On the postcard, the location of their home was marked by a three-pointed star.
Initially coloured blue, the logo was adapted with a laurel wreath border in 1926, and changed to silver in 1934.
In the suit, Mercedes pointed out that its ‘three-pointed star’ has become “iconic”, and is known worldwide.
Indeed, Forbes ranked the Mercedes-Benz brand 23rd among the world’s most valuable brands, noted the complaint.
According to the suit, Lenovo’s ‘Legion’ logo, like the Mercedes-Benz mark, comprises three spokes creating three obtuse angles, with a ring surrounding the spokes.
Overlapping products
But can a computing tech firm really infringe the products of a luxury brand best known for its high-end vehicles?
Well yes, according to Mercedes. The German company emphatically insists that it is not only known for its automotive vehicles, parts, and services, but also for its strong—and growing—affiliations with other brands, spanning electronics, computers, and software.
Lenovo, it argues, has marketed and sold products bearing this logo since 2018, which have then overlapped with content—authorised by Mercedes—that bear its logo.
To prove its point, the luxury brand’s complaint included an advertisement for a gaming subscription service that it is affiliated with that clearly shows the three-star mark.
Mercedes further highlighted its partnership with the artificial intelligence hardware and software company NVIDIA, and their joint creation of hardware and software components in the field of autonomous driving.
In addition, Mercedes emphasises that it has sponsorship relationships with software manufacturers and eSports associations, leading to its brands and vehicles becoming features of various computer and/or video games.
For Noel Cook, partner at Hanson Bridgett, the case poses somewhat of a conundrum.
“In a landscape where consumers routinely interact with technology both inside and associated with their vehicles, such as the use of touch screen displays, heads-up displays, and smartphone connectivity, it is an interesting question whether consumers are accustomed to differentiating between marks, goods, and services.”
A non-starter?
But some lawyers are doubtful of Mercedes’ chances of success.
According to Sharon Urias, IP practice group Leader at Greenspoon Marder, it is “a stretch to assert that consumers will be confused between the two brands”.
“Mercedes alleges that there is a likelihood of confusion because Lenovo’s products bearing the ‘Legion Logo’ are sold in overlapping channels of commerce with Mercedes because there are video games, for example, Forza Horizon that allow users to ‘drive’ Mercedes vehicles,” she explains.
But one crucial difference, she argues, is simply that Lenovo’s “star” is “upside-down” while the luxury brand’s mark isn’t, and Lenovo’s mark “just has a different overall feel and look from Mercedes’ mark”.
Another potential stumbling block for Mercedes is that the goods offered by Lenovo “are very different from Mercedes”, so “it is unlikely a consumer would confuse Lenovo with Mercedes,” adds Urias.
“Unless some evidence surfaces that Lenovo deliberately selected the mark with Mercedes in mind, Mercedes is going to have a difficult time convincing a jury that Lenovo deliberately infringed its logo.”
“Lenovo’s mark is different enough from Mercedes”, she adds, “and its goods are different enough that it appears that Mercedes’ case is not particularly strong.”
According to Cook, the crux of the case rests on the presence or otherwise of other similar three-pronged design marks used and registered in connection with automobiles, video games, and computer hardware and software goods and services.
“The coexistence of a large number of these marks could result in a crowded field in which trademark rights are narrowly construed, weakening Mercedes’ case. Conversely, if there are relatively few such marks, that could strengthen Mercedes’ case,” he observes.
Similar marks
Cook, for one, is less dubious about Mercedes' suit, and its odds of victory, pointing out that while the marks at issue are not identical, they are arguably similar.
“Mercedes has included numerous references to its brand presence, partnerships, and overall activity in connection with video games, eSports leagues, and autonomous driving technology, in an effort to establish an overlap with Lenovo’s goods and services,” he adds.
“Because the similarity of goods and services is a key factor in determining likelihood of confusion, the degree of overlap between the parties’ goods and services will be a pivotal part of the case.”
Both parties, he adds, are likely to conduct consumer surveys to assess the likelihood of confusion between the marks.
This could make all the difference, he says, especially given that survey results showing even a 20% degree of confusion among consumers is often seen by the courts as strong evidence of a likelihood of confusion.
Dilution solutions
Then there’s Mercedes’ claim of trademark dilution. Dilution protects famous marks from uses that dilute their distinctiveness, even without confusion or competition, and even where the goods and services are unrelated.
In Mercedes’ favour, there is little question that its mark is famous.
Notes Cook: “For a claim of dilution by blurring to succeed, the marks must be similar enough that a substantial portion of the relevant consumer group sees the two marks as essentially the same mark.”
The outcome will, ultimately, depend upon whether consumers view the two marks as “essentially the same mark,” so that Lenovo’s use of its mark is deemed “to weaken Mercedes’ rights in its famous mark”.
Mercedes is seeking injunctive and monetary relief for trademark infringement, dilution, and unfair competition under the Lanham Act, and unfair competition.
Mercedes declined to comment on the litigation.
WIPR has also approached Lenovo for comment.
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