Facts:

Daimler AG used its three-pointed star mark on vehicles.  It had registered a number of trade marks reflecting that use in New Zealand.

In 2006, Sany Group Co Ltd applied to register its three pointed Sany mark.

Daimler opposed the registration.  The Assistant Commissioner of Trade Marks allowed Sany’s application.  Daimler unsuccessfully appealed to the High Court.  Daimler then appealed to the Court of Appeal.

The grounds of appeal were:

(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 the same as or similar to Daimler's goods and services; whether the use of the Sany mark would be taken as indicating a connection in the course of trade with Daimler; and whether use of the Sany mark would be likely to prejudice the interests of Daimler (s 25(1)(c)).

Held, dismissing the appeal:

Likelihood of confusion

(1)   The question of similarity was ultimately one of impression.  The Court agreed with Collins J and the Assistant Commissioner that the marks were not similar [24].

(2)   The cases Crocodile International Pte Ltd v Lacoste (Simon France J) and Carabao Tawandang Co Ltd v Red Bull GMBH (Clifford J) did not stand for the proposition that a word without meaning is necessarily irrelevant as part of the mark.  They made the point that in some cases the addition of a word may not be significant [32].  In this case, the inclusion of the word “Sany” did further distinguish the marks, but even without its inclusion there was no risk of confusion because of lack of visual similarity. 

Crocodile International Pte Ltd v Lacoste HC Wellington CIV-2009-485-2534, 11 March 2011 and Carabao Tawandang Co Ltd v Red Bull GMBH HC Wellington CIV-2005-485-1975, 31 August 2006 explained.   

(3)    Likelihood of confusion was further reduced by the fact that purchasers of the goods were likely to be discerning and knowledgeable [33].  The Court did not agree that Sexwax Inc v Zoggs International Ltd stood for the proposition that it is not possible to take into account the fact that purchasers and prospective purchasers are discerning [36].

Sexwax Inc v Zoggs International Ltd (2014) 109 IPR 131, [2014] NZCA 311 referred to

(4)   The Court upholding the High Court on s 17(1)(a) meant that the appeal on s 17(1)(b) also had to fail [43].

Section 25(1)(b)

(5)   The High Court had found that the key difference between ss 25(1)(b) and 17(1)(a) was that s 25(1)(b) was not dependent on Daimler’s actual use, but upon notional use.  The High Court had concluded that the s 25(1)(b) ground of appeal had to be dismissed because of the conclusion under s 17(1)(a) that the marks were not sufficiently similar.  Following the NV Sumatra Tobacco Trading Co v NZ Milk Brands Ltd approach to s 25(1)(b), the Court agreed with the High Court [48].

NV Sumatra Tobacco Trading Co v New Zealand Milk Brands Ltd (2011) 93 IPR 156, [2011] NZCA 264 applied.

Section 25(1)(c)

(6)   The Court agreed that s 25(1)(c) was not engaged in this case because the marks were not similar and even if the word “Sany” is not taken into account, the Sany device inside the circle was not identical to or similar to Daimler’s three pointed star [53].

(7)   The Court noted that the question of what is necessary to show a connection in the course of trade between a mark and another trader has “not been finally resolved in New Zealand. But it does appear to require more than a “tenuous association” with limited similarity of names.”   In any event, the only evidence as to common usage suggested that no connection should be made [54].