In Daimler AG v Sany Group Company Ltd  EWHC 1003 (Ch) (14 May 2009) the registered proprietor of the following marks
sought injunctions and other relief against Sany Group Co. Ltd. in respect of its use of the following sign:
The claimant's marks had been registered in the UK and at OHIM for various goods and services for may years and it brought proceedings under s.10 (2) (b) and (3) of the Trade Marks Act 1994 and art 9 (1) (b) and (c) of the Community Trade Marks Regulation.
The Defendant acknowledged that it has sold and intends to sell construction machinery (including self-propelled and truck-mounted construction machines) in the UK under and by reference to the above sign but contended that "on a 'real world' assessment of the factors germane to the question of liability, the claims for infringement and passing off should be rejected".
The action was listed for trial in July 2009 with an estimated duration of 3 to 5 days. In an attempt to simplify its position the claimant applied for summary judgment under Part 24 upon the basis that the degree of similarity between the Defendant's marks and the protected trade marks was so great as to be clearly sufficient to justify a finding of infringement . Mr. Hobbs regarded that as "a pragmatic narrowing of its claim for infringement rather than the identification of a discrete claim or issue arising in the context of the proceedings as a whole."
Rejecting the application, the learned deputy judge explained:
"The central question in an action for infringement presented upon the basis encapsulated in the application for summary judgment is whether X times Y equals Z, with X representing the degree of similarity between the marks in issue, Y representing the degree of similarity between the goods in issue and Z representing the existence of a likelihood of confusion. In contrast to the position in registration proceedings, the relevant assessment must be made in the light of the specific circumstances characterising the allegedly infringing uses."
That usually required evidence of similarity of goods. There was an additional factor in this case, namely the defendant had counterclaimed for revocation of the claimant's registrations in respect of some specified goods on grounds of non-use.
Those were matters that should be tried.