CONFUSION : DETRIMENT : INFRINGEMENT : PASSING OFF : SIMILARITY : SPECIFICATIONS : TRADE MARKS : UNFAIR ADVANTAGE : DEGREES OF SIMILARITY AND DISSIMILARITY BETWEEN TRADE MARKS AND SPECIFIED GOODS : INCOMPLETE EVIDENCE : APPROPRIATENESS OF SUMMARY DETERMINATION : s.10(2)(b) TRADE MARKS ACT 1994 : s10(3) TRADE MARKS ACT 1994
There were matters in dispute in an action for trade mark infringement and passing off that could not be resolved by way of summary application on the available evidence.
The applicant (D) applied for summary judgment against the respondent (S) in an action for trade mark infringement and passing off. In its action, D referred to two signs as figurative trade marks, which were protected by national and Community trade mark registrations. The registrations covered goods in Classes 7 and 12, which included machinery, apparatus and vehicles. S had been using a sign as a figurative trade mark in various countries around the world. In the United Kingdom it had applied to register the sign in combination with the word SANY as a trade mark for use in relation to goods in Class 7. The parties’ marks in question consisted of a circle and three stylised shapes inside the circle. D claimed that S was selling or threatening and intending to sell vehicles such as cranes, excavators and truck-mounted pumps under and by reference to S’s figurative mark, with or without the element SANY. D’s case was that such use was or would be an infringement of the rights conferred by the protected trade marks as the use gave rise to a likelihood of confusion on the part of the public, in breach of the Trade Marks Act 1994 s.10(2)(b), and took unfair advantage of, or was detrimental to, the distinctive character or repute of the protected trade marks without due cause in breach of s.10(3) of the Act. S maintained that the infringement and passing off claims should be rejected as there was too low a degree of similarity between its marks and the protected marks and between its goods and those for which D’s registration could legitimately be retained. S sought part cancellation of D’s registration and questioned whether some of the goods for which the protected trade marks had actually been used were identified in the specifications with sufficient precision.
HELD: There were issues in the instant case concerning the specifications of goods for which D’s trade marks should remain registered and also with regard to identification of the goods for which S’s mark had been or would be used in the UK. D sought to marginalize those issues by focusing its application for summary judgment on the use of S’s marks in relation to certain goods including truck mounted pumps, cranes, concrete truck mixers and excavators. Although it was clear that D’s protected marks had been used in relation to commercial vehicles and extended to use in construction industry contexts, the extent to which D’s protected marks had actually been used in relation to truck mounted machinery and equipment was open to question on the evidence. Also there was a wider dispute between the parties concerning the degrees of similarity and dissimilarity between the various goods in issue. The matters in dispute were material to the existence of a likelihood of confusion and determination of liability for infringement and could not finally be resolved by way of summary application based on incomplete evidence. Further, there was an open (and a heavily contested) question as to whether the similarities between the marks in issue were outweighed by the differences between them so as to exclude the existence of a likelihood of confusion in relation to some or all of the goods in issue. No evidence had been given of any incidents of apparent confusion. Even where a mark was identical to another with a highly distinctive character, it was necessary to adduce evidence of similarity between the goods in issue when considering the question of likelihood of confusion, Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc (C-39/97)(1998) All ER (EC) 934 ECJ followed. The evaluation of similarity for the purpose of determining the claim based on the existence of a likelihood of confusion was indissociable from the evaluation of similarity for the purpose of determining whether the use of S’s mark was in any event liable to be prevented by reference to broader considerations of unfair advantage or detriment under s.10(3). The latter determination was rightly no regarded as appropriate for summary determination. The required assessment would in all relevant respects be more soundly based if it was made in light of the whole of the evidence intended to be adduced at trial. On the information available, it was unlikely that the claim in passing off could succeed if the infringement claim failed.
 EWHC 1003 (Ch)
DAIMLER AG v SANY GROUP CO LTD (2009)