In 2019, Schneider Electric （China） Company sued Suzhou Schneider Elevator Company over trademark infringement and unfair competition and sought 120 million yuan in damages, arousing wide attention.
Recently, Jiangsu Suzhou Intermediate People's Court rendered its first-instance judgment, holding that Schneider Elevator's use of trademarks identical or similar to the trademark 施耐德 （Note: official Chinese translation of Schneider）， the words 施耐德 in the trade name and the English trademark Schneider in the domain name constituted trademark infringement and unfair competition, and ordering the defendant to cease infringing Schneider Electric China's trademarks, change its trade name, publish a statement and remove ill effects, and indemnify some 40 million yuan in damages and reasonable costs.
Schneider Electric SA, a world-renowned company providing integrated solutions for electric efficiency and consumption, filed for registration of No.G715396 trademark Schneider Electric in China, requesting certified use on Class 9 goods such as transportation, handling and switch of electricity, scientific, electrical and electronic devices used for detection and control in March 1999. In February 2007, its No.4168148 trademark 施耐德 was approved for use on Class 9 goods such as current-controlled switches, electric current limiters, electric wiring boxes and electric switches.
Schneider Electric China, established in July 1995, was authorized to use the above two trademarks by Schneider Electric SA and defend rights in its own name on the occasion of trademark infringements and use of the two trademarks without permission.
Schneider Electric China claimed that the word Schneider and the Chinese characters 施耐德 are corresponding to each other through long-term use and heavy promotion and were awarded well-known trademark several times in China. The defendant's use of the mark identical or similar to Schneider and 施耐德 prominently in daily operations and the English trademark Schneider in the domain name would confuse the relevant public and constituted trademark infringement and unfair competition. The company requested the Court to order the defendant to cease infringement, change its trade name, publish a statement and remove ill effects and indemnify some 120 million yuan in damages and reasonable costs.
The defendant Schneider Elevator was set up in March 2010, dedicating to manufacturing, installing, repairing and selling of elevators, escalators, travelators and their parts. The defendant argued that the plaintiff did not manufacture elevators and its use of the SCHNEiDER trademark would not cause confusion. The trademarks in dispute did not reach the well-known status in 2010 and it did not infringe the plaintiff's trademark rights while using the SCHNEiDER trademark on elevators.
Suzhou Intermediate People's Court held that the evidence can prove the trademarks Schneider Electric and its figure and 施耐德 enjoy high reputation and necessity to be identified as well-known marks. The elevators and escalators the alleged infringing mark was certified to be used on are closely related to breakers and switches the well-known marks were used on in functions and sales channels, which would confuse the public. In this connection, the Court ordered the defendant to cease using the alleged infringing mark.
Meanwhile, the defendant has infringed Schneider Electric China's trademark rights for 10 years in apparent bad faith, enough to rate the application of punitive damages. Factoring in the defendant's profit margin and degree from the help of the trademarks, the damages are set at 20 million. With the addition of another 100 per cent in punitive damages, the total sum is 40 million yuan.
Neither party saw the case going its way and both appealed to Jiangsu High People's Court. As of publication, the case has entered into the second-instance proceedings. （by Sun Fanghua）
（Editor Li Xingyi）
（All contents of this newspaper may not be reproduced or used without express permission）