(By Luo Yanjie) Abstract: China’s new Trademark Law still enforces the principle of “first to file,” but at the same time a prior user of a trademark only need prove to some extent that their prior use of a registered trademark had a degree of popularity, and need not prove that a subsequent user of the trademark “squatted” the trademark by registering it. If the board approves such prior use, the prior user will have the right to continue using the trademark in the original scope of use. “Improper means” as stated in Article 31 of the Trademark Law, refers to situations “where the applicant knows or should have known that the trademark had been used by others with a certain degree of influence, and preemptively registered the same, then such applicant shall be determined to have used improper means to register the mark.”
(By Luo Yanjie) Trademark infringement via the unauthorized use of an enterprise’s name is a common phenomenon in China. Since the requirements for registering a company in Hong Kong are well known for being comparatively lax, many companies attempt to register well-known trademarks as an enterprise name in Hong Kong, and then run a business in Mainland China using this registered name, effectively fulfilling its role as a “free-rider” of another’s well known trademark.
The A.O.SMITH Corporation was founded over 100 years ago in Milwaukee, Wisconsin, USA, and is a global leader applying innovative technology and energy-efficient solutions to products marketed worldwide. However, the “American”AOSIMIHE (note: AOSIMIHE is a rough approximation of the name A.O. Smith transliterated into Chinese) Appliances (International) Group Ltd., registered in Hong Kong, is a free rider attempting to imply a connection between it and the United States-based A.O. Smith Corporation. Based on its Hong Kong company and trademark registration, the former succeeded in registering its “AOSIMIHE” trademark in Mainland China. Today, we’ll discuss how A.O.SMITH Corporation protected its legal interests against the “American” AOSIMIHE Appliances (International) Group Ltd.