Judging Whether Two Trademarks in Chinese and Foreign Languages are Similar Requires Considering Whether the Two Constitute a Stable Correspondence
——Chateau Lafite Rothschild v. Trademark Review and Adjudication Board and Nanjing Gold Hope Wine Industry
[Syllabus]
To judge whether the trademarks in Chinese and foreign language are similar, we should not only consider the components of the trademarks, their overall similarity, significance and reputation of relevant trademarks and the correlation between the products used, but should also whether the two have formed a stable correspondence among relevant public.
[Case No.] Supreme People’s Court (2016) ZGFXZ No. 34
[Cause of Action] Administrative case regarding trademark dispute
[Collegial Panel Members] Wang Yanfang Qian Xiaohong
Du Weike
[Keywords] Trademark, dispute procedure, trademark similarity, correspondence
[Relevant Legal Provisions] Article 28 of Trademark Law of the People’s Republic of China
[Basic Facts]
In the retrial of the administrative case on trademark dispute (hereinafter referred to as “Chateau Lafite” trademark dispute case”) between the Applicant–Chateau Lafite Rothschild (hereinafter referred to as “Chateau Lafite”) and the Respondents – Trademark Review and Adjudication Board of the State Administration for Industry and Commerce (hereinafter referred to as “TRAB”) and Nanjing Gold Hope Wine Industry (hereinafter referred to as “Gold Hope Company”), the date of the application of the trademark No. 4578349 “Chateau Lafei” (i.e. the disputed trademark) was April 1st, 2005. The disputed trademark was approved for use in Category No. 33 products, including wine, liquor (beverage), fruit wine (including alcohol), distilling spirit beverage, apple wine, alcohol-containing liquid, fruit-containing spirit beverage, rice wine, highland barley wine and cooking wine, and the registered trademark’s exclusive owner was stipulated as Gold Hope Company. The application date for the “LAFITE” trademark (i.e. the reference trademark) was October 10th, 1996, and the trademark was approved for use in Category No. 33 product – alcohol-containing beverage (except for beer), and the registered trademark’s exclusive owner was stipulated as Chateau Lafite. Within the statutory time limit, Chateau Lafite filed an opposition application regarding the disputed trademark with the TRAB on the grounds that it violated Article 28 of the Trademark Law of the People’s Republic of China (2001 revised edition). The Trademark Review Committee rendered the Decision No. 55856 for Application No. 4578349 “Chateau Lafei” Trademark Opposition S.P.Z. [2013] (hereinafter referred to as Decision No. 55856) on September 2nd, 2013, and cancelled the disputed trademark on the grounds that the disputed trademark violated Article 28 of the Trademark Law of the People’s Republic of China. Gold Hope Company refused to accept the ruling and instituted administrative proceedings. Beijing No.1 Intermediate People’s Court maintained Decision no. 55856. Gold Hope Company refused to accept the ruling and instituted an appeal. In the court of second instance, the Beijing High People’s Court held that it was difficult to affirm that the reference trademark had a market reputation in China’s mainland before the application date of the disputed trademark and that relevant public had been able to identify the reference trademark and “Lafei”. The disputed trademark had been registered and used for up to 10 years and had established a stable market order. Thus, from the perspective of maintaining the established and stable market order, the registration of the disputed trademark in this case shall be maintained. Therefore, the court overruled the judgment of the court of first instance and Decision No. 55856. Chateau Lafite refused to accept the ruling and applied to the Supreme People’s Court for retrial. Upon investigation, China Economic Net reported in an article titled AQSIQ Announces six kinds of imported “Lafite” wine that do not conform to quality standard, “Chinese consumers have always been enticed by ‘Lafite’ Wine, however, recently, the Administration of Quality Supervision, Inspection and Quarantine announced six kinds of imported Lafite wine that did not conform with the quality standard, which left admirers of Lafite shocked. According to China Economic Net, the six kinds of products that did not conform with the quality standard are: Chateau Lafei 2012 dry red wine…” On August 1st, 2016, Sohu Finance published an article with text and photos “‘Chateau Lafite’ showcased at China Food and Drinks Fair, consumers don’t know it is a knockoff.” The Supreme People’s Court ruled that the case should be reviewed.
Holding
The Supreme People’s Court made an administrative judgment (2016) ZGFXZ No. 34 on December 23rd, 2016, to overrule the judgment of the court of second instance and maintain the judgment of the court of first instance and Decision No. 55856.
[Reasoning]
The Supreme People’s Court held that the decision on whether the trademarks are similar requires considering the components of trademarks and their overall similarity, and also the significance and reputation of relevant trademarks and the correlation between the trademarks, and whether it is easy to cause confusion, which shall be used as the judgment standard. The disputed trademark consists of the words “Chateau Lafei” in Chinese, “Chateau” has weak significance with respect to the wine category and “Lafei” is the main component of the disputed trademark. The key to judge whether the disputed trademark is similar to the reference trademark is to judge whether “Lafei” is similar with “LAFITE” or whether the two have a stable correspondence. Before the application date of the disputed trademark, according to the facts ascertained by the court, there have been situations where all kinds of publicity reports transliterated “LAFITE” into “Lafei”, in New Express, Yangtze Evening Post and Beijing Daily, which are publication that are easily accessible and have a large audience. The articles stated in relevant media highly commended “LAFITE” wine, and the reference trademark has a high reputation. In addition, through many years’ commercial operation activities, Chateau Lafei has established a stable connection between “Lafei” and “LAFITE” objectively, and relevant public in China often refer to “Lafei” as “Lafite”, and the disputed trademark is similar to the reference trademark. In addition, for a trademark that has been registered and used for a period of time, whether the relevant public groups have been formed by establishing a high market reputation is not decide based on time, but by whether the relevant public can distinguish from other trademarks through their use. As per the facts ascertained by the court, the substandard products involved in relevant news reports are all relevant products of the disputed trademark. Also, according to news reports, relevant public have confused the disputed trademark with the reference trademark. Therefore, the evidence submitted by Gold Hope Company failed to prove that relevant public groups have been formed by the use of the disputed trademark. The conclusion made by the court of second instance that the disputed trademark has formed a stable market order has no factual basis, and the Supreme People’s Court corrected the same.
