Mercedes-Benz fails to drive out Sany trademark

Car maker Daimler has again failed to successfully oppose a trademark application despite a New Zealand appeals court ruling that its ‘Mercedes-Benz’ trademark is “well-known”.

Yesterday, September 9, the New Zealand Court of Appeal affirmed a judgment from both the Intellectual Property Office of New Zealand ( IPONZ) and the New Zealand High Court that there are no similarities between Daimler’s mark and an application by Chinese manufacturing company Sany Group.

In 2006, Sany applied to register a trademark consisting of three interlocking number ones with a steering wheel-shaped circle around the digits. Underneath the image is the term ‘Sany’.

The applied-for mark covers machine equipment including road rollers and drilling machines, and buses, lorries and cars.

Daimler opposed the mark on the grounds that it is “likely to deceive or cause confusion” among consumers with its own “well-known” Mercedes-Benz mark.

The Mercedes-Benz mark, which has been used in New Zealand since 1911, is also circular shaped, like a steering wheel, with three touching lines in the middle.

IPONZ dismissed Daimler’s opposition to Sany’s application in 2008, prompting Daimler to appeal against the decision to the high court.

In 2014, the court refused to overturn the decision.

Daimler again appealed against the decision but in yesterday’s ruling the appeals court rejected the opposition.

Justice Ellen France, writing the opinion, said the marks were “conceptually different” and that confusion and deception among those in the industries covered by Sany’s mark is “unlikely”.

The appeals court agreed that Daimler’s mark is well-known.

But because France and the other two judges agreed that there are no similarities between the marks, Daimler could not succeed in its opposition.

France said that more than a “tenuous association” needs to be made between the marks for Daimler’s well-known argument to prevail.

A spokesperson for Daimler told WIPR: "This time, we did not win the lawsuit against Sany in New Zealand, but in other countries we have already won this trademark lawsuit.

"We will thoroughly review the reasons for the judgement and then decide how we proceed," he added.