Recently, the Jiangsu High Court concluded a second instance trademark infringement and anti-unfair competition dispute between A.O. Smith Corporation ("A.O. Smith"), A.O. Smith (China) Water Heater Co., Ltd. ("A.O. Smith China"), and Guangdong Simaisi Electric Co., Ltd. ("Guangdong Simaisi"), Taizhou Qingfeng Decoration Co., Ltd. ("Taizhou Qingfeng"). The court held that the "AO Smith in Chinese" mark with reg. no. 1114992 and "AOSmith" mark with reg. no. 2017196 constitute well-known marks on water heaters and other goods. The defendants infringed upon A.O. Smith and A.O. Smith China's trademark right and should immediately stop the infringement and compensate for economic losses of RMB 1.5 million (USD211,400).
Cited Marks
The court found that: First, despite the administrative rulings found that when a third party used the "AO Smith in Chinese" mark on laundry machine goods in June 2003, the Cited mark "AO Smith in Chinese" with reg. no. 1114992 has not yet constituted as a well-known mar. According to the case-by-case principle followed by courts in recognizing well-known marks, such finding may not necessarily affect this court's rulings of this case based on the evidence at hand. Therefore, whether the Cited Marks can be recognized as well-known marks shall be determined based on the evidence and facts of this case.
Second, if there is a slight difference between the actually used trademark and the registered trademark, but its distinctive features does not change, it can be regarded as the use of a registered trademark. Before October 2003, the plaintiff used the words "A.O. Smith" and "A.O. Smith in Chinese" in commercial activities, and a stable corresponding relationship between the two marks had been established. The plaintiff's actual use of the two marks did not change the distinctive features of the trademark involved and can be regarded as trademark use. In addition, for trademarks that have been actually used before registration is approved, such use can be considered as a continuation of use. Therefore, it can be concluded that the plaintiff continued to use its Cited Marks before October 2003.
Third, comprehensive consideration of the sales contracts, advertising, promotion activities, media reports, audit reports involved, market survey reports, search reports, etc. provided by the plaintiff was sufficient to determine that before October 2003, the Cited Marks had been widely known to the relevant public in China and reached a well-known level, and is still well-known today.
In addition, in this case, the Cited marks mainly contains elements such as "Smith in Chinese" and "SMITH." Through the publicity and use of the right holder, "Smith in Chinese" and "SMITH" have become the core elements for identifying the source of goods. The accused infringing logo is similar to the Cited Marks in text, pronunciation, and overall appearance, which constituted similar marks. When the alleged infringing trademark was used, the Cited Marks had already gained a high reputation across the country. The use of the accused infringing mark on the same or similar goods can easily cause confusion to the relevant public, and the accused acts constituted trademark infringement.
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