Protection Against Trade Mark Infringement In China Seen From The Italian Perspective: Ariston Thermo China Co Ltd And M&B Marchi E Brevetti Srl v Foshan Shunde A Li Si Dun Electric Appliance Co Ltd

Reprinted from E.I.P.R Issue 10, 2011

This is a comment regarding a judgment obtained by an Italian company (M&B Marchi e Brevetti, which is part of the Ariston group) and its Chinese subsidiary (Ariston Thermo China Co Ltd) having a long-term presence in China and specialising in the manufacture and marketing of household water heaters. An interesting aspect of this case is the fact that the Shanghai Court judges have punished quite severely the trade mark infringers using a similar mark which is particularly well known to the Chinese public, even though it is not one of the "celebrity" brands, typical of fields like fashion and luxury goods.1

Background

The Italian group Ariston, one of the world's leaders in the production and marketing of water heaters bearing the same brand, has faced serious trade mark infringement in the Chinese market. The infringer was a company from Foshan city, called Shunde A Li Si Dun Electrical Appliance (A Li Si Dun—is the Chinese equivalent of the word "Ariston").

The Chinese company produced and advertised water heaters bearing the brand name "A Li Si Dun" and "Arizhu + house device" which was similar to the Ariston registered trade mark (see the comparison between the two trade marks in Figures 1 and 2 below). It was also the proprietor of a domain name very similar to a Chinese version of the Ariston brand (http://www.arisitun.com [Accessed July 18, 2011]). The products of that company presented serious problems: the Chinese press reported circumstances in which the explosion of water heaters caused serious injury and even death to consumers, and reference was always made to the "A Li Si Dun" trade mark, exactly the same as Ariston's Chinese brand.

Figure 1 The Ariston trade mark

Figure 2 The Arizhu trade mark

In early 2010, two companies of the Ariston group (the Italian holder of the Ariston trade marks portfolio and the Chinese branch company) filed a civil suit before the Shanghai Court against the infringer and its Shanghai distributor, claiming trade mark infringement and unfair competition, and seeking injunction, damages and publication, on the part of the infringers, of a statement in the local press aiming to eliminate the negative effects of the confusion that had arisen between the signs and to restore the good reputation of the Ariston brand in China. Since the Ariston group has been manufacturing and marketing its products on the Chinese market for more than two decades and has invested considerable amounts in advertising of its brand, all relevant documents were filed in order to show the judges that the brand was important and well known (which increased also the prejudice suffered by the Italian group due to infringement).

Judgment from the Shanghai Court

The judgment was rendered at the end of February 2011, in less than one year. The panel of judges held that both the "A Li Si Dun" and the "Arizhu + house device" signs used by the defendant infringed the plaintiff's registered trade marks. In particular, as far as the earlier sign is concerned, the Shanghai Court stated that A Li Si Dun is the dominant element of Ariston's complex trade mark (composed of the words Ariston and A Li Si Dun as well as of the house device; see Figure 1), owing to the fact that its being written in Chinese characters attracts more attention from Chinese consumers. Therefore the "A Li Si Dun" sign, even used without other elements, still interferes with the complex Ariston trade mark. With reference to the "Arizhu + device" sign, the court declared it was sufficiently similar to the plaintiff's "Ariston + device" trade mark to cause a risk of confusion for consumers when used on the same kind of product.

As a consequence, the judges issued an injunction enjoining both Chinese companies from using both signs on the products, on advertising materials, as a domain name (which was also found infringing, as "arisitun" was very similar to "alisidun") and as a company name. The infringing manufacturer was also condemned to provide compensation for the prejudice caused to Ariston, in the amount of RMB...

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