(By Luo Yanjie) Abstract: to determine whether two trademarks are similar to each other, the main consideration is determining the distinguishing features of the mark. However, to determine a famous or well-known product, such a determination is typically limited to Chinese territories, while on the other hand the reputation of a mark may involve consideration of overseas reputation.
Freeriding among Chinese manufacturers is unfortunately a very common and severe issue, and for most well known foreign companies, there may be situations in which they have not paid adequate attention to the Chinese market, and ergo have provided insufficient attention to policing its marks within the realm of IPR protection. As a result, the vast majority of foreign brands are helpless in facing rampant infringement.
SOCIETE CIVILE DE CHATEAU LAFITE ROTHSCHILD (the “Lafite Company”) is the holder of the trademark “LAFITE” and “CHATEAU LAFITE ROTHSCHILD,” both of which were registered with the trademark office in 1997, the original registering country being France. Subsequent to French registration, the trademark was granted exclusive protection in China by way of the Madrid System for the Registration of International Marks. The Jinhongde Company adopted the trademark “LAFITE FAMILY” and “拉菲世族” (directly translated, equivalent to “Lafite Family”) in the course of its business operation, and also registered the domain name “lafitefamily.com” for the purpose of selling wine. Lafite Company alleged that Jinhongde had infringed its exclusive rights over the trademark “LAFITE,” as well as engaged in unfair competition; taking these allegations into consideration, it filed suit in court against Jinhongde.
In court, the defendant Jinhongde Company primarily argued that the trademark “LAFITE FAMILY” was distinguishable from the “LAFITE” mark held by the plaintiff, and therefore was unlikely to be found confusing to the relevant consumer. Furthermore, defendant Jinhongde argued that its conduct did not constitute trademark infringement; furthermore, the defendant argued that the trademark “LAFITE” and the image trademark did not belong to the well-known or noted trademark, and it had not applied any integral part of the trademark or any combination of it. For this reason, Jinhongde stated, it should not be considered infringement or unfair competition through Jinhongde’s use of the trademark alone.
After the hearing the case, the court held that the wine “LAFITE” mentioned in domestic online publications and other specialty journals could be construed as materials from the plaintiff, who had registered the trademark “LAFITE.” For this reason, through long-term use and marketing, the plaintiff’s product, “LAFITE” wine, had already gained its own reputation in China, and had been accepted by the public to some extent. The direct Chinese translation “拉菲” (la fei) had been legally determined to be a noted product as provided for in the Anti Unfair Competition Law.
The mark “LAFITE FAMILY” used by the allegedly infringing product consisted of the marks “LAFITE” and “FAMILY,” comprising the No.21122916 trademark held by the plaintiff, which could only be distinguished from the original by the uppercase and lowercase letters. Based on this fact, they would legally be considered the same words, and an obvious similarity could be fairly determined. Hence, the trademark “拉菲世族” and the accompanying domain name involved in the case were found to adequately lead to confusion among the public that the defendant’s product had special links or origins to that of the plaintiff’s, and therefore it had infringed the exclusive trademark rights of the plaintiff, or alternatively resulted in unfair competition.
This case is one of typical infringement resulting from the free riding of well-known trademarks by knock-off manufacturers in China. As for the facts involved in the case, we would like to share our analysis as follows:
1. Why it could constitute the similarity of “LAFITE FAMILY” to “LAFITE”
In trademark examination practice, it is not necessary for one trademark to be considered significantly similar to another one if it includes or encompasses the whole of the latter. In Class 42, for example, the trademark “尼塔” (nita) could co-exist with “莫尼塔” (monita). Why then, did the court in this case determine that there was a similarity between the marks “LAFITE FAMILY” and “LAFITE”? The main reason could be because the court considered the distinguishing parts of the trademark in determining the similarity of the marks. In comparison, the word “莫尼塔” (monita) could constitute a new and independent word or mark, and its whole part could be differentiated from “尼塔” (nita), meaning “莫尼塔” (monita) would not be considered descriptive of or significantly similar to “尼塔” (nita). However, in comparing the marks “LAFITE FAMILY”and“LAFITE,” the word “family” is a descriptor for the surname LAFITE, and the main distinguishable portion is the surname “LAFITE.” Therefore the court could find the similarity between the marks and find the defendant liable for infringement and unfair competition.
2. The territory involved in a well known or notable product determination shall be limited to China, but can consider foreign elements
In regard to the relevant territory for a judgment as to whether a mark can be considered well known under the Trademark Law, the Courts are only obligated to consider the marks’ reputation within China. This is one of the reasons why most foreign trademarks cannot be determined to be well known marks in China, with the obvious exceptions of those having truly global reach. For these trademarks, their holders are typically unable to provide adequate evidence speaking to the mark’s reputation in China, and especially acceptance of the mark and knowledge of the mark among the consumers. For noted products in regard to Anti Unfair Competition, similar problems are often encountered. Like the trademark “LAFITE” in this case, despite it being a well known mark since the 19th century in some parts of the world, the main reason the court confirmed its reputation was only due to its consideration of reports publicized on domestic websites and professional journals. However, as to evidence regarding a marks’ reputation overseas, such evidence will only be referenced in the court’s consideration. In other words, even if a brand were well reputed, if it could not provide any evidence to demonstrate equal reputation in China, the court would not find it to be a well known or notable mark. In the previous post on our website, we have more detailed analysis on the issue.