This is the story of a legal ping pong from China, where the company Zhongshan City Wantian Electric Appliance Co., Ltd. (hereinafter referred to as Wantian) filed for the registration of the mark “AOSAILO” for use on water heater related product in 2012, and the same was approved for registration in 2013. However, A. O. Smith Water Heater Co., Ltd. (Smith) having the registered marks ‘AOSmith’ and ‘A. O. Smith’ for similar goods filed for a cancellation of the trademark AOSAILO claiming that it is similar to their registered trademark.
The Trademark Review and Adjudication Board (TRAB), China dismissed the claims of Smith and held that in terms of overall appearance of the marks the two marks were not similar and thus would not cause confusion amongst the public.
Smith however, was not satisfied with the TRAB judgment and appealed to the Beijing IP Court. The Court reversed the order of the TRAB and rendered a judgment in favour of Smith stating that the distinctive parts of the disputed trademark AOSAILO and Smith’s prior registered trademarks AOSmith and A.O.SMITH are the letters “AO”, thus, in terms of composition and overall appearance of the marks, the disputed mark is similar to the prior trademarks. The Court also relied on the reputation of Smith’s company and marks and stated the consumers are likely to be confused if Wantian’s mark AOSAILO is permitted use.
This judgment however, left Wantian and TRAB dissatisfied and an appeal was filed at the Beijing High Court. The High Court reversed the decision of the IP Court and affirmed the lower court’s judgment, thus ruling in favour of Wanian and its mark AOSAILO.
Compiled by: Adv. Sachi Kapoor | Concept & Edited by: Dr. Mohan Dewan
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