A.O. Smith Vs. Star Smith: Who owns the right over the word ‘Smith’?

22nd March, 2024The Plaintiffs in this case are A.O. Smith Corporation and its Indian subsidiary, A.O. Smith India Water Products Pvt. Ltd. The Plaintiff alleged infringement of its trademark ‘A.O. SMITH’ and ‘BLUE DIAMOND’ by the Defendants. The Defendants incorporated a company in the name of ‘Star Smith Export Pvt. Ltd.’ in August 2020, and filed a trademark application for registration of the word mark ‘STAR SMITH’ on a proposed to be used basis. The Plaintiffs have been using the mark ‘A.O. Smith’ since 1874 internationally and in India since 2006. The Plaintiffs claimed that the Defendants’ adoption of the mark ‘STAR SMITH’ for identical products like geysers, purification systems, water purifiers, RO systems and the mark ‘BLUE DIAMOND’ for water heaters is a clear case of trademark infringement.

The Court relied on numerous landmark judgments to discuss the determination of the dominant part of trademarks, the assessment of the likelihood of confusion among consumers, and the evaluation of the defendant’s claim of honest concurrent use. The Court observed that the word ‘Smith’ is the dominant word of the mark A.O. Smith and adoption of the word ‘Smith’ for identical goods amounts to infringement. The Court also observed that the Defendants have been using a different mark namely ‘Aero Star’ before adopting ‘STAR SMITH’ in 2020. The adoption of ‘SMITH’ in conjunction with ‘STAR’ in 2020 seems prima facie dishonest adoption to ride on the goodwill of plaintiffs and cause confusion in the market, particularly on identical goods

The Court dismissed the plea, thereby restraining defendants from using the marks ‘STAR SMITH’/ ‘STARSMITH’ and ‘BLUE DIAMOND’ or any other mark that was deceptively similar to plaintiffs’ marks for geysers, purification systems, water purifiers, RO systems and other cognate and allied goods.

Citation: A.O. SMITH CORPORATION AND ANR. Vs. STAR SMITH EXPORT PVT. LTD. AND ANR. – IN THE HIGH COURT OF DELHI AT NEW DELHI; 22nd March, 2024, I.A. 19011/2022 & I.A. 12253/2023 in CS(COMM) 532/2022.

Authored by Naika Salaria, Associate, Trademarks & Copyrights


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