Daimler AG v Sany Group Co Limited - [2015] NZCA 418

IN THE COURT OF APPEAL OF NEW ZEALAND

CA227/2014
[2015] NZCA 418

BETWEEN	DAIMLER AG Appellant
AND	SANY GROUP CO LIMITED Respondent

Hearing:	28 July 2015
Court:	Ellen France P, White and Winkelmann JJ
Counsel:	P D M Johns and T A Huthwaite for Appellant M T Lennard for Respondent
Judgment:	8 September 2015 at 9.30 am

JUDGMENT OF THE COURT

A The appeal is dismissed.

B The appellant must pay the respondent costs for a standard appeal on a band A basis and usual disbursements.

____________________________________________________________________

REASONS OF THE COURT

(Given by Ellen France P)

Table of Contents

Para No

Introduction [1]
Background [5]

Decision of the Assistant Commissioner [8]

High Court decision [9]

Is there a likelihood of confusion (s 17(1)(a))? [11]

The relevant principles [13]
Daimler’s case [18]

Our approach [24]

Is use of the Sany mark contrary to New Zealand law (s 17(1)(b))? [39]

Impact of consideration of fair and notional use (s 25(1)(b)) [44]

Effect of the Daimler mark being well known (s 25(1)(c)) [49]

Result [55]

Introduction

Daimler AG (Daimler),[1] the appellant, began to use its three-pointed star mark on vehicles it manufactured internationally in 1909 and in New Zealand in 1911. Daimler has registered a number of trade marks reflecting that use in New Zealand (the Daimler marks), namely:

[1]Formerly known as DaimlerChrysler AG.

The respondent, Sany Group Co Ltd (Sany), applied on 31 August 2006 to register the following trade mark (the Sany mark), namely:

Daimler opposed registration of the Sany mark on a number of grounds including that Sany’s mark was likely to deceive or cause confusion because of its similarity to the Daimler marks[2] and that Sany’s mark was not registrable under s 25(1)(c) of the Trade Marks Act 2002 (the Act) dealing with the adverse effect of similarity to a well known mark. The Assistant Commissioner of Trade

Marks (Assistant Commissioner) approved Sany’s application.[3] Daimler’s appeal to the High Court was unsuccessful.[4] Daimler now appeals to this Court.[5]

[2]Trade Marks Act 2002, s 17(1)(a).

[3]Sany Group Co Ltd v DaimlerChrysler AG T27/2008, 29 September 2008 [Assistant Commissioner’s decision].

[4]Daimler AG (Formerly DaimlerChrysler AG) v Sany Group Co Ltd [2014] NZHC 532 [High Court judgment].

[5]This Court determined the appeal is properly brought under s 66 of the Judicature Act 1908 in the earlier decision of Daimler AG v Sany Group Co Ltd [2014] NZCA 421, [2014] NZAR 1159.

The issues on appeal reflect the grounds of opposition and are as follows:
(a)Whether use of the Sany mark would be likely to deceive or cause confusion (s 17(1)(a));
(b)Whether use of the Sany mark is contrary to New Zealand law (s 17(1)(b));
(c)Whether the Sany mark is similar to the Daimler marks, in respect of the same or similar goods and services, and its use is likely to deceive or confuse (s 25(1)(b)); and
(d)Whether the Sany mark, or an essential element of it, is similar to Daimler’s well known marks; whether Sany’s goods and services are…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2015] NZCA 418
Decision Date: 8 September 2015 at 9.30 am

CaseChat Overview and Summary

Daimler AG, an automotive company, sought to oppose the registration of a trade mark by Sany Group Co Ltd, a construction machinery manufacturer, in New Zealand. The appeal centred around whether Sany's mark was likely to deceive or cause confusion and whether its use would be contrary to New Zealand law, under s 17(1) of the Trade Marks Act 2002. Daimler argued that its well-known three-pointed star mark would lead to confusion with Sany's proposed mark, which also featured a three-pointed device within a circle. The Court of Appeal, however, found that the marks were not similar enough to cause confusion or deception. The Court emphasised that the assessment of similarity must consider the overall impression of the marks, taking into account visual and conceptual differences, as well as the discerning nature of the relevant market. The Court also concluded that the use of the Sany mark would not be contrary to New Zealand law, as it did not meet the higher threshold of confusion required for passing off or breaches of the Fair Trading Act 1986. The appeal was dismissed, and Daimler was ordered to pay costs to Sany for the standard appeal on a band A basis and usual disbursements.

Orders