Daimler Ag v Sany Group Company Ltd

Summary judgment is inappropriate where the outcome of a trade mark infringement claim depends on a fact-sensitive assessment of the similarity of the marks and goods in the specific circumstances of the alleged use.

Similarity between goods must be assessed by reference to all relevant factors, including their nature, end users, method of use, trade channels, competition and complementarity. A highly distinctive or identical mark does not remove the need for evidence of similarity between the goods. Where the scope of the claimant’s specifications, the defendant’s intended use, or the relationship between the goods remains disputed, the issue should ordinarily be determined at trial.

Daimler AG brought proceedings against Sany Group Company Limited for infringement of registered trade marks and passing off. The claimant relied on well-known figurative marks registered principally for goods in Classes 7 and 12.

The defendant accepted that it had sold, and intended to sell, construction machinery in the United Kingdom under similar figurative marks. It disputed the similarity of the marks and goods and counterclaimed for part-cancellation of the claimant’s registrations for non-use.

The claimant applied under CPR 24.2 for summary judgment on a narrowed infringement claim concerning specified construction vehicles and machinery. The central issue was whether the degree of similarity between the marks was sufficient to establish infringement without a trial, despite unresolved questions concerning the specifications, the goods actually used or intended to be used, and the applicable assessment of similarity.

1. The application was dismissed. The court could not conclude without a trial that the defendant had no real prospect of successfully defending the relevant issues, and there was a compelling procedural reason for allowing the matter to proceed to trial.
2. Under CPR 24.2, summary judgment is unavailable where the outcome cannot be regarded as clear without a trial. The court must exercise caution where the evidence is incomplete or a fuller investigation might add to or alter the evidence and affect the result. The guidance in Doncaster Pharmaceuticals Group Ltd v The Bolton Pharmaceutical Company 100 Ltd [2006] EWCA Civ 661; [2007] FSR 3 was applied.
3. The likelihood of confusion could not be determined by treating the degree of similarity between the marks as independently decisive. The relevant assessment had to reflect the specific circumstances of the allegedly infringing use, including the relationship between the particular goods. Evidence of similarity between the goods was required even where the mark was identical or highly distinctive, applying Canon KK v Metro Goldwyn Mayer Inc Case C-36/97 and [1998] ECR I-5507, as reaffirmed in Alecansan SL v OHIM Case C-196/06 P and [2007] ECR I-36.
4. Relevant factors included the nature, end users, method of use, trade channels, intended destination and clientele of the goods, and whether they were in competition or complementary. The degree of dissimilarity between the goods could materially affect liability. That assessment was properly made at trial where the evidence was contested or incomplete.
5. Unresolved issues concerning the proper scope of the claimant’s specifications, including the effect of wording taken from international class headings, were material to both infringement and the counterclaim for part-cancellation. The court did not finally determine the competing approaches to class-heading interpretation.
6. The assessment relevant to the claim under section 10(3) of the Trade Marks Act 1994 was closely connected with the assessment of similarity and was likewise unsuitable for summary adjudication. Directions for the further conduct of the proceedings were to be considered.