Enlightenment of Sany Overseas Trademark Rights Protection

As China's trademark rights protection "Overseas Victory*5656 Case", Sany's victory over Mercedes-Benz in the UK provides a successful example of how many Chinese foreign-related enterprises can use legal rights protection in the face of foreign giants, and its importance is far greater than the victory of this case itself
In a trademark lawsuit that occurred in the United Kingdom not long ago, China's Sany Group defeated Germany's Daimler-Benz AG, clearing the *5655 obstacle for Sany to register its trademark in the British market. This lawsuit is just a common ordinary commercial litigation case for the British, but it is a very noteworthy case for Chinese enterprises, and it is also a successful example for many Chinese foreign-related enterprises to learn from when they go abroad and go global. This is because, in today's era of economic globalization and internationalization of production, how to use legal means to protect their own interests and how to not flinch or even retreat without a fight in the face of the challenges of foreign enterprises, especially foreign giant enterprises, are problems that must be solved by Chinese enterprises on their journey to the world.

Fight for the trademark in court

There is really no big "conflict" between China Sany Group and German Mercedes-Benz in the main business, on the contrary, the two sides are still important business partners. Sany is a manufacturer of construction machinery, mainly including excavators,craneand heavy machinery such as concrete pumps for building pouring, the company has only a 20-year history. The German company Mercedes-Benz mainly produces the famous Mercedes-Benz cars. In addition to being world-renowned for its high-quality, high-performance luxury cars, it is also the world's most famous manufacturer of buses and heavy-duty trucks.
The "grievances" and "lawsuits" between China's Sany and Germany's Mercedes-Benz originate from the logos of the two companies.
In June 1906, Daimler AG applied for registration of the three-pointed star as the symbol of the car, symbolizing mechanization on land, on the water and in the air. In 1916, a circle was added around the trident with four small stars above the circle and the inscription "Mercedes" underneath. "Mercedes" means happiness, meaning that the cars produced by Daimler will bring happiness to the owners. Since then, the "three-pointed star" has become a symbol of the quality and nobility of Mercedes-Benz cars, and has become popular all over the world
The logo of Trinity Group is also round, with three "1" arrows in the middle. However, the difference from the Mercedes-Benz logo is also very clear. Because the three "1s" in the circle of the Sany trademark are strong and powerful, ordinary people will not confuse the Sany logo and the Mercedes-Benz logo or cause misunderstanding.
However, the "serious" Germans do not seem to think so. In 2006, after Sany Group submitted the application for trademark registration to the United Kingdom, Mercedes-Benz Company filed an opposition, objecting to the registration of the Sany trademark and requesting an opposition examination of the trademark. Before the opposition examination procedure was concluded, Daimler pushed Sany to the dock of the High Court in London, England, on the grounds that the Sany trademark infringed its registered trademark rights. Daimler's accusations are mainly based on three aspects: the Sany graphic trademark is similar to Mercedes-Benz's "Trident" to confuse consumers; There is a suspicion of infringement and counterfeiting of Sany graphic trademark; With the help of the advantages of the Mercedes-Benz brand, the Sany trademark occupies an "unfair advantage".

Respond positively and win

Registering a trademark in the UK is one of the important measures of Sany Group to actively explore the international market, and it is unexpectedly entangled in "lawsuits". In order to prepare for this lawsuit, Sany Group hired an international law firm (Bird &Bird) to defend it and formulate a detailed response strategy. There are thousands of pages of supporting materials collected and submitted by Sany, detailing the meaning, source and development process of the Sany trademark, and at the same time fully proving that the use of the Sany trademark is not a reference to the Mercedes-Benz "Trident", and there is no intent to infringe. In the defense of this case, Sany argued that the use of its trademark would not cause confusion with the Mercedes-Benz trademark, and that consumers would not associate it with the Mercedes-Benz trademark when they saw the Sany logo. Sany also argued that some of the designated goods of the Mercedes-Benz trademark should be revoked because they were not used.
At the trial in July 2009, Mercedes-Benz withdrew its claims for counterfeiting and some of its claims for trademark infringement, leaving only one claim, namely that the Sany trademark had unreasonably exploited the distinctiveness and reputation of the Mercedes-Benz trademark by creating a connection between consumers and the Mercedes-Benz trademark.
After further debate and defence, the case finally came to a conclusion. On October 23, the High Court of London ruled against Mercedes-Benz in a judgment. The judgment held that Sany's intention to use its logo in the UK market was only because the logo had been created and used by the company a long time ago,* and finally dismissed Mercedes-Benz's infringement lawsuit. It also means that Mercedes-Benz can no longer file a lawsuit against any EU member state on the same grounds.
At this point, Sany has cleared a huge obstacle for its trademark registration in the UK market. Therefore, this case has also been called by some legal professionals as the "Overseas Victory*5656 Case" of China's trademark rights protection.

An example of an overseas rights protection tree

Sany Group's victory over Mercedes-Benz, a veteran Western company, in the international trademark litigation case has provided a lot of useful experience for Chinese enterprises to go global.
The first step is to face the challenges and apply the law to them. A lawyer from Qili Law Firm, one of the major British law firms, told this reporter that from this case and some China-related cases that the company has taken over, it can be seen that in international trademark disputes and even other trade and commercial disputes, Chinese enterprises must enhance their legal awareness and enhance their awareness of using the law to protect themselves. As long as they understand and apply the relevant laws of foreign countries, Chinese enterprises will be able to better protect their own interests and have a much better chance of winning in dealing with legal challenges abroad. If a foreign company adopts a weak attitude of retreating and calming down the situation in the face of lawsuits, it will only tie up its own hands and feet in the foreign market, and thus limit its ability to develop in the international market. Therefore, in this sense, Sany's victory over Mercedes-Benz in the trademark lawsuit has set a successful precedent for domestic enterprises to use the law to protect themselves, and its importance is far greater than the victory of the case itself.
In the long run, on the whole, with the rapid development of world trade and increasingly fierce international competition, international trade frictions and commercial disputes will increase significantly, and Chinese enterprises will inevitably face more challenges from foreign enterprises. How to establish an effective response mechanism to meet such challenges and protect the legitimate business interests of Chinese enterprises is a major issue that needs to be solved urgently.