Vehicle manufacturer fails in bid to stop Chinese company using three-pointed star

Daimler has lost another round in a global battle to protect its brand against what it perceives to be a similar logo being used by a Chinese construction machinery firm.

In a judgment released by the Court of Appeal yesterday, Justices Ellen France, Helen Winkelmann and Douglas White agreed with decisions made by the High Court and the Assistant Commissioner of Trade Marks.

Daimler had opposed registration of the Sany trademark, arguing that it would deceive or cause confusion because of its similarity to the Daimler trademarks.

Sany was incorporated in China in 1989 and manufactures and exports construction machinery including road rollers, excavators, diggers, hydraulic pumps, buses and cars.

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The company's application in August 2006 to register its trademark in New Zealand was approved by the Assistant Commissioner of Trade Marks.

Daimler, meanwhile, began as a motor vehicle manufacturer in 1882 and started using the three-pointed star logo on its vehicles internationally in 1909 and in New Zealand in 1911. Today Daimler manufactures cars, trucks, buses and other industrial products under the Mercedes-Benz brand.

Daimler lost a previous appeal over the issue in the High Court in 2014.

Sany's counsel, Michael Lennard, told the Herald that the dispute had been playing out "vigorously" in different jurisdictions across the globe.

"A lot of the decisions haven't got to this level, I think we're probably the first which has actually got to second Court of Appeal level," Lennard said.

"In the United Kingdom they ruled in favour of Sany, different jurisdictions have gone different ways.

"It's the nature of trademark litigation - the same issue tends to get relitigated over and over again in various jurisdictions."

Intellectual property lawyer David Marriott said it was common for trademark disputes to play out across the globe.

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"Each country has its own trademark laws until you get to Europe, where there are some harmonised laws," Marriott said.

"It's common to see multiple decisions in relation to the same or similar trademarks around the world, and they don't always agree with each other," he said. "We'd normally expect them to agree and you'd normally bring them to the commissioners' or the courts' attention if there had been decisions in other jurisdictions, but they don't always agree."

Which countries the companies took legal action in depended on what markets they deemed important to the brand, Marriott said.

"In this particular case, Daimler obviously see this as a threat to the monopoly they've got in their trademark in that device - that three-pronged device.

"I imagine they will have made the decision that every time something that looks similar comes along, they will try to stamp it out so that you don't get a whole lot of things that incrementally get closer and closer."

Daimler

• Began as a motor vehicle manufacturer in 1882.
• Started using three-pointed star trademark internationally in 1909.
• Makes cars, trucks, buses and other industrial products under Mercedes-Benz brand.

Sany

• Incorporated in China in 1989.
• Manufactures and exports construction machinery.
• Products include road rollers, excavators, diggers, hydraulic pumps, buses and cars.