3 December 2020TrademarksRory O'Neill

‘Vehicle Smart’ TM prevails despite Daimler opposition

Daimler unsuccessfully tried to block a ‘Vehicle Smart’ trademark from being registered in the UK, citing its own ‘Smart’ EU mark covering cars.

UK company  Vehicle Smart filed to register a logo featuring its name at the  UK Intellectual Property Office (IPO), covering mobile apps related to vehicle booking and testing services.

Among the company’s products is Vehicle Check, which allows users to research the history of a vehicle via an app.

Daimler opposed the application, claiming it would cause confusion with its own ‘Smart’ mark. The German auto company claimed that the term “Smart” when used in the context of the auto industry, will always be linked with Daimler. But the IPO considered this argument to be “overstating” the reputation of Daimler’s earlier mark.

According to a decision issued last month, the Vehicle Smart brand was unlikely to confuse a significant number of consumers.

“The average consumer on seeing the mark or hearing the phrase ‘vehicle smart’ will make no link to the opponent’s smart branded passenger cars,” the IPO decision said.

This was especially true in the case of mobile apps, which are not covered by Daimler’s ‘Smart’ trademark. Even where Vehicle Smart’s app covers the use of mobile apps for vehicle-related services, the similarity with those covered by Daimler were “very low”, the IPO found.

The IPO ordered Daimler to pay legal costs of £1,200 ($1613) to Vehicle Smart, whose mark has been allowed to proceed to registration.

The German car manufacturer has been involved in a number of high-profile IP disputes as of late, mostly to do with standard-essential patents (SEPs) owned by Nokia.

Nokia claims that Daimler has refused to take a licence to its SEPs, which cover technology used in connected cars.

But Daimler says the obligation to take a licence is on component suppliers, rather than sellers of end products such as vehicles.

The Court of Justice of the European Union (CJEU) is expected to provide clarity on the issue, in a decision that will be closely watched by the telecommunications and automobile industries.

Last week, the Düsseldorf Regional Court asked the CJEU to clarify where EU law stands on the issue of which part of the supply chain must take a licence to standard-essential technology.

Germany’s competition authority had pressed for the courts to make a referral to the CJEU, whereas US competition regulators have effectively green-lit SEP owners’ favoured practice of licensing to end-level manufacturers.

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More on this story

26 November 2020   Düsseldorf Regional Court has referred a standard-essential patent licensing dispute between Nokia and Daimler to the Court of Justice of the European Union.
24 June 2020   The Federal Cartel Office of Germany has stepped into a standard-essential patent licensing dispute between Nokia and Daimler, urging a court to ask the Court of Justice of the European Union to clarify fundamental questions.