OHIM-IPO class heading conflict case

The IPKat reports on Daimler v Sany [2009] EWHC 1003 (Ch), a request for summary judgment, which was refused on 14 May by Mr Geoffrey Hobbs QC, sitting as a Deputy High Court judge.

Daimler sued Sany for trade mark infringement, claiming that Sany's device mark caused confusion with and took unfair advantage of, or caused detriment to the well-known Mercedes Benz figurative mark. The Mercedes mark was registered in Classes 7 and 12 and Sany had applied to register its mark in Classes 7 and 12, together with a statement supporting the application saying that Sany had been using the mark, or had an intention that it would be so used.

Sany counter-claimed for part-cancellation of Daimler's mark. Daimler had specified the goods for which the mark was registered by giving the class headings for Classes 7 and 12 in the Nice Classification.

Mr Hobbs QC noted that there was an inconsistency in approach between OHIM and the IPO - the former allowing class headings as clams to all goods and services within a particular class, the latter objecting to wide and vague specifications, and also taking a literal approach to what is covered by class headings (e.g. Class 15 is entitled musical instruments, so specification adopting the class heading would only cover instruments and not, for example, music stands, which are included in the class). The Deputy Judge noted that he did not think that there was room for such a divergence to co-exist in the European trade mark system, and for these purposes led to a real issue that could not be decided via a summary judgment.

Daimler couldn't sidestep the issue by seeking to rely on those goods for which it had clearly used the mark, and which were clearly included in Sany's specification. There were issues concerning the goods for which Daimler's mark should remain registered and these would impact on the question of similarity of goods, which would impact on the question of confusion. It was also an open question whether the marks were similar enough to cause confusion.

The IPKat isn't too sure what could be done at trial that would resolve the conflict between OHIM and the IPO. Is a reference to the ECJ in the offing, he wonders...?

Mercedes the Cat here