Daimler Chrysler AG v Javid Alavi (t/a Merc)
Date
26 January 2001
Legislation
Trade Marks Act 1994, ss.10, 46
Community Trade Marks Regulation 40/94, Arts. 9, 10
Keywords
Trade mark infringement; trade mark revocation for non-use; t-shirt use; trade mark use
Counsel
Henry Carr QC and Mark Vanhegan for the Claimant, Alastair Wilson QC and James Graham for the Defendant
Solicitors:
White & Case for the Claimant; Collyer-Bristow for the Defendant
Judge:
Pumfrey J.
Court:
Chancery Division
Reported:
[2001] ETMR 98, [2001] RPC 42
Summary:
DaimlerChrysler brought proceedings against Mr Alavi for passing off and infringement of their registered UK and Community Trade Marks, the marks being MERCEDES and MERCEDES-BENZ for machinery and motor cars, and more importantly, for articles of clothing. Mr Alavi was trading from a shop called MERC, selling clothes and shoes marked MERC.
It was held that although DaimlerChrysler had a strong goodwill for many years, in respect of motor vehicles, the evidence suggested that the use of the mark with respect to clothing was only 'T-shirt use'. That is to say use of the mark as decorative embellishment of clothing, or use of the clothing as a billboard to advertise the mark. There was no rule to suggest that T-shirt use of the mark would confer a goodwill in relation to T-shirts - it was a question of fact which must be assessed in the light of the evidence. In this case, the use of the words MERCEDES and MERCEDES-BENZ was not sufficient to found a reputation in respect of clothing, and further DaimlerChrysler's trading goodwill did not extend to use of the word MERC as a mark for clothing.
The evidence showed that Mr Alavi had started trading in 1967, the word MERC was established by 1975 as a trademark and was in 1997, entitled to the benefit of a trading goodwill associated with the name MERC. The action in passing off failed because Mr Alavi had not made any relevant misrepresentation.
Decision
In considering Mr Alavi's claim for revocation of the mark on the grounds of non-use, it was held that DaimlerChrysler's clothing marks would be revoked in respect of all clothing except sweaters, anoraks, polo-shirts, scarves, T-shirts and baseball caps. However, a point of construction of s.46 Trade Marks Act 1994 had been raised. A reference to the ECJ would be needed on whether a registration would need to be restricted to precisely the goods in respect of which use is shown or some other, wider class, and if so by which criteria that class would be established.
In considering the question of infringement of DaimlerChrysler clothing marks, this was an 'identical goods, similar marks' case under s10(2). The action for infringement of these trademarks failed, as there was no likelihood of confusion between clothing marks and Mr Alavi's MERC mark. The common abbreviation of MERCEDES and MERCEDES-BENZ to MERC did not 'spill over' to cause a likelihood of confusion.
DaimlerChrysler's vehicle marks were plainly not similar to the MERC mark and an action under s10(3) failed, but in the alternative, any advantage derived by Mr Alavi by using the MERC mark on clothing was negligible. There was also no evidence that detriment would be caused to DaimlerChrysler's marks - there was no evidence that a member of the public would associate the use of the mark MERC (together with links to skinhead sites) on Mr Alavi's website, with DaimlerChrysler'marks.
On the issue of trade mark use see also R v Johnstone (HL) and Arsenal v Matthew Reed (ECJ).