By: Chandra Lye
Aug 22, 2018
SAN DIEGO – The U.S. District Court for the Southern District of California recently granted partial summary judgment to German-based Daimler in a trademark and patent infringement case.
Daimler, the parent company of Mercedes-Benz, sought partial summary judgment in its suit claiming A-Z Wheels LLC and several other defendants violated trademark laws by selling car parts similar in design to Daimler products. Daimler also requested partial summary judgment on their counterfeiting claim and design patent infringement claim.
U.S. District Judge Janis Sammartino heard oral arguments in the case Aug. 8 and filed her decision Aug. 13.
“Plaintiff claims defendants are using plaintiff’s trademarks in connection with the manufacture, offer for sale, sale and distribution of wheels which are not manufactured, authorized or sold by plaintiff,” court documents said. “Plaintiff also claims defendants are reproducing, manufacturing, selling, and distributing wheels which blatantly copy issued design patents in various distinctive and artistic wheel designs owned by plaintiff.”
“The court agrees with defendants’ preliminary argument in that it is plausible that a person buying a wheel rim on the internet, sight unseen, would do his or her research and look closely at the products," the ruling said. "However, even if the hypothetical consumer were to spend time looking at defendants’ products on USArim.com, there is nothing on the website that would ease plaintiff’s concerns of confusion,” Sammartino wrote.
“Even if a consumer were to read the entire product description of the wheel on, for example, eBay, that consumer would most likely not be alerted to the fact that the wheel is only a replica. Nor would the consumer be alerted to the fact that Mercedes does not condone the sale of the wheel. Therefore, this factor does not weigh in defendants’ favor,” the ruling said.
Sammartino also noted that Damiler had proven that consumers would be confused by the duplicate products. “In this case, when defendants are using plaintiff’s exact trademark with the intent of selling replica products, without always using the word replica on the website, the court finds there is no dispute that plaintiff has proven a likelihood of confusion,” the ruling said.
With regards to the design patent infringement, the court said, “An ordinary observer would be deceived and could be induced to purchase defendants’ product over plaintiff’s. There are no sharp distinguishing features between the two designs against the context of the prior art. Plaintiff has therefore met its burden in proving design patent infringement.”
Source >> https://norcalrecord.com/stories/511540078-daimler-granted-partial-summary-judgment-in-trademark-violation-case-involving-wheel-sellers
