The No.6054822 拉 斐 特 trademark (hereinafter as the trademark in question) was filed for registration by Beijing Chateau Lafitte Hotel on May 17, 2007, and would be approved to be used on Class 43 goods including catering, hotel and bar on April 21, 2015.
In less than half a year after the trademark was registered, the French company Les Domaines Barons de Rothschild (Lafite) lodged an invalidation request to the former Trademark Review and Adjudication Board (TRAB), requesting determination of the well- known mark status of its N0.1122916 LAFITE trademark (No.1 cited trademark) and No.6186990 拉菲 trademark (No.2 cited trademark ) in wine products, and the registration of trademark in question has injured the specific name right of 拉 菲 as wellknown mark. In parallel, the trademark in question constituted similarity with No.1 and No.2 cited trademarks when used on the similar goods or service, and the registration of trademark in question has infringed the prior trade name of company.
The No.1 cited trademark owned by Lafite was filed for registration in 1996 and was approved to be used on alcohol (except beer). The No.2 cited trademark was filed in 2007, and it was registered on alcohol (except beer).
On August 16, 2016, the former TRAB held that the trademark in question does not constitute similarity with No.1 and No.2 cited trademark on certified used goods or service. In parallel, the existed evidences cannot prove that the two cited trademarks were already well- known marks before the trademark in question was filed for registration. In this connection, the former TRAB upheld the registration of the trademark in question.
Lafite then brought the case to Beijing IP Court. The Court revoked the TRAB decision and asked TRAB to revisit the case.
TRAB and Beijing Chateau Lafitte Hotel then brought the case to Beijing High People's Court. The Court held that before the trademark in question was filed for registration, Lafite had established solid relationship between 拉菲 or 拉斐 and LAFITE by years of operation. The Chinese public also considered 拉 菲 or 拉 斐 as LAFITE trademark of Lafite. The trademark in question has the same pronunciation of No.1 cited trademark, which constituted copy, imitation and translation of No.1 cited trademark. Although the services on which the trademark in question was certified to use belong to a different class from that of No.1 cited trademark, the two trademarks have several overlaps in consumer group and target group. Under the circumstance that the No.1 cited trademark has become a well- known mark and the trademark in question has constituted copy, imitation and translation of No.1 cited trademark, the relevant public would be convinced that there is certain association between the trademark in question and No.1 cited trademark when purchasing the services of the trademark in question.
In this connection, the Court affirmed the original judgement.
Source: China Intellectual Property News, CNIPA
