trade

Trade marks infringement rival marks applicable to goods in same class claimant to show evidence of confusionDaimlerChrysler AG v Alavi (t/a Merc): ChD...Trade marks infringement rival marks applicable to goods in same class claimant to show evidence of confusionDaimlerChrysler AG v Alavi (t/a Merc): ChD (Pumfrey J): 26 January 2001The defendant had carried on business selling clothes in the Carnaby Street area of London since the late 1960s from shop premises called MERC.Some of the clothes sold by the defendant were branded MERC also.

The claimant brought proceedings alleging that the defendant had infringed a number of their UK and EC trade marks in the names Mercedes and Mercedes-Benz in relation to clothing, also that the defendants association with selling clothing to mods and skinheads, especially the latter, was detrimental to the value of the claimants better-known trade marks in relation to luxury motor cars.Henry Carr QC and Mark Vanhegan (instructed by White & Case) for the claimant.

Alastair Wilson QC and James Graham (instructed by Collyer-Bristow) for the defendant.Held, dismissing the action, that in the light of the limited use the claimant had made of its trade marks in relation to clothing, the claimants sales would remain adequately protected even if the mark were revoked in respect of all clothing except those classes of garment in which the claimant had been able to demonstrate use; that it was unclear whether, for the purposes of article 10 of the First Trade Mark Directive (89/104/EEC), registration was to be restricted to precisely those goods in respect of which use had been shown or some other, wider class; that even where a mark was identical to another of a highly distinctive character, it was still necessary to adduce evidence of similarity between the goods and services covered; and that despite the evidence of usage of the word Merc as an abbreviation of or nickname for Mercedes-Benz, there was no evidence of spillover in relation to the clothing marks, and no evidence of confusion between the defendants sign and the claimants UK trade marks in relation to clothing