Recently, the British High Court in London has rejected the lawsuit of Daimler AG owned Mercedes-Benz Cars against Sany heavy Industry Co., Ltd (hereinafter referred to as Sany), a Chinese manufacturer of construction machinery in a trademark dispute. Sany finally succeeded in the trademark battle against the well-known Mercedes-Benz. As the first successful international case of intellectual property rights involved with the Chinese company, the victory of Sany shocked the whole European Union.
Daimler owned registered trademark in classes 7 and 12 for the well-known Mercedes-Benz three pointed star mark relating to machinery and vehicles. As a well established Chinese manufacturer of construction machinery, Sany enjoyed sales of over £1 billion all over the world, although distribution in the UK was very limited. In August 2006, Sany applied in Britain for the registration of its graphic sign of a three-pointed star in combination with the letter form of SANY as its trademark in class 7 for machinery and class 12 for vehicles.
Unexpectedly, Daimler sued Sany for trademark infringement and alleged that the trademark of Sany is too much similar to its “Mercedes-Benz” mark and easily misleads consumers; second, it has an intention to passing off its famous three pointed star mark in bad faith; and third, Sany’s trademark takes advantages of Mercedes-Benz brand and produces unfair advantage. The case came on trial on July 6 of 2009.
Sany argued that its mark is quite different from "Mercedes-Benz” and it had used this logo in the course of its business since 1995. Therefore, no trademark infringement, passing off or unfair advantage was constituted.
Latter, the British High Court reviewed the case and held that, although the logo of Mercedes-Benz was famous, there was not sufficient evidence showing that Sany’s trademark can “call to mind” the former mark among the general public, therefore no infringement and passing off constituted. Further, when Sany has been using “its own innocent corporate logo” for a number of years and had no deliberate attempt to take advantage of Benz’s trademark, there is no unfair advantage taken.
