The Shanghai Intellectual Property Court concluded a trademark infringement lawsuit raised by the French wine manufacturer Chateau Lafite against Shanghai Mellowines Development Co Ltd and its parent company Shanghai Safe International Logistics.
Chateau Lafite Rothschild owns the English trademark Lafite in China since 1997, and filed a trademark application for the Chinese version of Lafite, a decade later. Its application was first rejected by the SAIC and in 2017, the trademark registration was finally approved.
In May 2015, Lafite found that Shanghai Mellowines sold imported wine under the name of Chateau Moron Lafitte and used an expression on the packaging of its Laffite wine which looked similar to the Chinese trademark. At the time, the alleged infringement was committed, the plaintiff had yet to obtain the Chinese trademark. Nevertheless, unregistered trademarks could be subject to a legal protection in China, if they are recognized as a well-known trademark.
The issue raised before the court was whether the Chinese version of Lafite could be qualified as an unregistered well-known trademark in China, and thus enjoyed a legal protection against the use of a similar or identical mark for the same or similar goods by an other person. The Court held that the Chinese version of Lafite, though still pending trademark approval at the time, had established a stable corresponding bond with Lafite and become well-known to wine consumers in the country before the claimed infringement.
Also, Mellowines, as a professional wine importer and distributor, should have been clearer about the correspondence between the Lafite trademark and its Chinese version, yet failed to take reasonable avoidance measures in translating Lafite wine.
The Court recognized the Chinese version of Lafitte as an unregistered well-known trademark for the period prior to the date of the trademark approval. Thus Mellowine breached the trademark rights of the Chinese version of Lafite by using a similar a mark.
The Chinese Trademark Law provides some factors for determining whether a trademark could be recognized as a well-know trademark in China. Well-known marks are protected, irrespective of whether they are registered or not. In the Lafite Casem the trademark wasn’t registered.
According to Article 14 of the PRC Trademark Law, the following factors should be considered:
- The degree of awareness of the trademark among the relevant public ;
- The duration of use of the trade mark;
- The duration, extent and geographical scope of all publicity operations carried out for the trademark;
- The record of protection of the trademark as a well-known trademark; and
- Other factors making the trademark well-known
Under article 13.2 of the PRC Trademark law, the owner of a well-known trademark can prohibit others trademarks from reproduction, imitation or translation of its marks, on similar or identical goods, provided that it may causes public confusion.
According to the article 13.3, the scope of protection covers different or dissimilar goods for a trademark which has been registered in China, if :
- The use of a trademark misleads the public and;
- It causes damage to the interests of the owner of the well-known trademark
The article 13 provides that “no application for its registration may be granted”. Thus the owner of a well-known trademark is allowed to block third-party registrations for both similar or identical goods and dissimilar or different goods.
We can assist you to find the most sophisticated way to protect your trademark rights in China. Please find more information on our Intellectual Property Guide which provides an introduction to different aspects related to Intellectual Property issues or feel free to contact us.