Intellectual property: Daimler's appeal was rejected, and Trident could not stop Sany Heavy Industry

On September 8, the High Court of New Zealand rejected the appeal of German automaker Daimler alleging that China's Sany Heavy Industry trademark infringed its Trident Star trademark. This is Sany Heavy Industry's second victory in the trademark litigation against Daimler after winning the case in the High Court of London.

The dismissal of the High Court of New Zealand has made a clearer legal distinction between the two long-standing marks. For Sany Heavy Industry, which has entered the foreign market, the smooth confirmation of trademark rights also means that even if it is as strong as the "Trident Star", it cannot stop the pace of Sany's overseas expansion.

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In Daimler's application to the Court of Appeal, its lawyer, Paul Johns, claimed that Judge David Collins had overemphasized the differences between the two marks in his High Court decision, ignoring the similarities between the two marks.

Daimler officially used the Trident Star trademark in 1909. In 1911, the trademark was put into use in New Zealand.

In August 2006, Sany Heavy Industry applied for trademark registration in New Zealand and was approved.

According to the judgment issued by the Court of Appeal on September 8, Daimler objected to the registration of Sany Heavy Industry and Commerce on the grounds that Sany's trademark was similar to Daimler's Trident trademark, which was prone to confusion and deception.

In the High Court's decision, Judge Collins held that both marks involved a circle and a three-pronged pattern that overlapped the edges. The three-pronged pattern is arranged in a similar way in the logo. But these similarities are all secondary.

Durham lawyer Paul Johns pointed out that the differences identified by Judge Collins were not sufficient to offset the commonalities between the two trademarks. On the contrary, he argued that the main concepts and visual representations of the two marks were similar. In his application, Johns wrote: "The concept of the Sany logo is too abstract to have little impact on New Zealand consumers, and the Daimler trademark clearly demonstrates the "ambition of three consecutive victories" of land, sea and air, in which case consumers are prone to mistake the abstract Sany logo for the Daimler trademark.

However, Court of Appeals Judge Ellen France, Helen Winkelmann and Douglas White said they agreed with Judge David Collins and his assistant commissioner. They pointed out that, like David Collins, they would not think of Daimler's trademark when they saw Sany's trademark.

The judges of the Court of Appeal said Judge Collins' summary was impressive: On the one hand, the Daimler trademark is clearly a symbol of quality. The simplicity of its trademark is striking; On the other hand, Sany Heavy Industry's trademark looks more like a rotating rotor, a complex piece of equipment. If you only look at the two icons, it is difficult to discern the meaning of the icons. The design elements of the Sany and Daimler logos are not visually or conceptually similar. Purchasers in the relevant market will not be confused with the trademarks of Sany and Daimler.

For these reasons, Daimler's appeal was dismissed by the High Court of New Zealand.

The UK won the case

In 2006, Sany Heavy Industry applied for registration of the company's graphic logo and the word "SANY" as a trademark in the United Kingdom, and Daimler-Benz AG objected to the registration of the Sany trademark and requested an opposition examination of the trademark. Before the opposition review procedure was concluded, Daimler pushed Sany to the dock of the High Court in London, England, on several grounds such as "the similarity between the Sany graphic trademark and Mercedes-Benz's 'Trident' constitutes infringement".

In January 2009, Daimler applied to the court for summary judgment in this case, requesting a temporary injunction against the use of the Sany trademark in the UK. However, on the basis of the evidence provided by Sany, the court rejected the request on the grounds that Daimler was insufficient. After the summary judgment expires, the ordinary procedures continue to apply to the case.

In the face of detailed evidence, on October 23, 2009, the High Court of London, England, ruled that the "intention" of Sany Heavy Industry to use the logo in the British market was only because the logo was a trademark established by Sany Heavy Industry a long time ago and had been used by the company, and there was no sufficient evidence to show that the expression of the Sany logo was close to the Trident Star logo. The outcome of the case also means that Daimler can no longer file a lawsuit in any EU member state on the same grounds. Since then, Sany has won a substantial victory in the trademark battle between Sany Heavy Industry and Daimler, and this case is also known as the "China Intellectual Property International Victory*5656 Case".