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people often buy imported wines to celebrate festivals, holidaysjoyful events. so, what does "lafite", a well-known imported wine, have to do with "lafitte manor", another imported wine? recently, shanghai intellectual property court concluded a case involving dispute over trademark infringement between chateau lafite rothschild v. shanghai mellowines development co., ltd. (hereinafter referred to as "mellowines")shanghai safe international logistics co., ltd. (hereinafter referred to as "safe international logistics"). its ruled that two defendants should immediately stop the infringement upon the plaintiffs exclusive right to use the registered trademark "lafite", immediately cease to use the mark "lafitte" that is similar to "lafite", publish a statement on china industrycommerce news to eliminate the effect,jointly compensate for the plaintiffs economic losses, including reasonable expenses, totaling rmb 2,000,000 yuan.
the plaintiff, chateau lafite rothschild, is a world-famous wine manufacturer. in october 1997, its application for registration of the trademark "lafite" was approved by the state trademark officehas been valid ever since.
in may 2015, the plaintiff found that two defendants were importingselling plenty of wines bearing the marks "chateau moron lafitte""拉菲特庄园". the former was attached onto the front of the bottle, in which "lafitte" was only one letter different from the plaintiffs registered trademark "lafite", while the latter was attached onto the back of the bottle, in which "拉菲特" was similar to "拉菲", a mark recognized as the plaintiffs unregistered famous trademark.
the plaintiff filed a lawsuit in court, believing that as a transliteration of the plaintiffs registered trademark "lafite", "拉菲" had already enjoyed high visibilityinfluence after extensive publicityuse in china it has formed a stableunique correspondence with,refers exclusively to, the plaintiffits wine products. the trademark "拉菲" was approved for registration in march 2017, but the alleged infringement involved occurred earlier. hence, the court was requested to recognize "拉菲", which hadnt been registered at the time of occurrence of the alleged infringement, as the plaintiffs unregistered famous trademark,meanwhile, order the two defendants to stop the infringement, publish a statement to eliminate the effect,jointly compensate for the plaintiffs economic losses as well as reasonable expenses incurred to stop the infringement totaling rmb 5,000,000 yuan.
the defendants, mellowinessafe international logistics, argued that "拉菲" was far from being an unregistered famous trademark,the court should notdoesnt need to recognize it as an unregistered famous trademark. the plaintiff had no right to prohibit them from using "拉菲特" mark. the marks used for the wine they importedsold were neither identical nor similar to the plaintiffs registered trademark involved, which wouldnt confuse consumers with the source of the goodstherefore didnt constitute an infringement upon the plaintiffs trademark.
after the trial, shanghai intellectual property court held that the goods whose trademark "拉菲" was sought for protection by the plaintiff as an unregistered famous trademark were class 33 wines, identical to the alleged infringing goods - wines. the preliminary approval of "拉菲" mark was announced on january 27, 2014final approval was ed in february 2017 after the trademark reviewadjudication board of the state administration for industry & commerce of the peoples republic of china determined that the opposition couldnt be established upon adjudication. according to paragraph 2, article 36 of the trademark law, the plaintiff acquired the exclusive right to use the trademark "拉菲" on april 28, 2014,actions where others use an identicalsimilar mark for the samesimilar goods are not retroactive within the period of time from the expiration date of its publication period to the date of making the approval of application for registration. as the alleged infringement occurred earlier than the date of approval, whether the alleged infringement was establishednot depends on whether "拉菲" was an unregistered famous trademark at the time of the occurrence of the alleged infringement,its necessary to figure out the fact in this case. relevant facts found prove that the relevant public in china usually refers to "lafite" trademark of the plaintiff by "拉菲", which has formed stable correspondence with the plaintiffs "lafite" trademark,has been widely known to the relevant public in china prior to the occurrence of the alleged infringement. therefore, "拉菲" could be recognized as an unregistered famous trademark.
"lafite" is a trademark registered by the plaintiff in china, which enjoys high reputationknown to the relevant public in our ry. the "lafitte" contained in moron lafitte attached to the front of the alleged infringing wine bottle was different by only one letter "t" from the plaintiffs registered trademark "lafite". they were highly similar in terms of pronunciationvisual effect, which was very likely to cause the chinese public who dont use french as their mother tongue to misrecognize the source of the goodsconnect the goods of the defendants with the goods for which the plaintiffs trademark was registered. therefore, the two trademarks were similar,the mark used on the front label of the alleged infringing wine infringed on the plaintiffs exclusive right to use registered trademark "lafite" in china.
as a specialized wine importerdistributor who importssells the plaintiffs "carruades de lafite""chateau lafite rothschild", mellowines should have known the plaintiffs trademark "lafite"its corresponding chinese name "拉菲". however, it didnt fully translate the mark attached onto the front of the wine bottle nor make reasonable avoidance when translating the alleged infringing wine to "拉菲特庄园干红葡萄酒", which manifested obvious subjective bad faith. as "拉菲特" was similar to the plaintiffs unregistered famous trademark "拉菲", the "拉菲特" mark attached onto the back of the alleged infringing wine bottle infringed upon the plaintiffs unregistered famous trademark "拉菲".
in view of the investment relationship between two defendants,the company profile of mellowines stating that "relying on all-process logistics, integrated services,the strong global purchasing logistics advantage of the parent company shanghai safe international logistics co., ltd.", as well as relevant news published on the companys website, it could be deemed that safe international logistics had been aware of mellowines importsale of the alleged infringing goods,had provided logisticswarehousing services, etc. to help it to commit the trademark infringement. hence, safe international logistics act constituted joint infringement.
to sum up, the defendants acts infringed upon plaintiffs right to exclusively use the registered trademark "lafite"to use the trademark "拉菲".
compensation for infringement: according to the provisions of paragraph 2, article 36 of the trademark law, if a trademark is approved for registration as the opposition cannot be established upon adjudication, actions where others use an identicalsimilar mark for the samesimilar goods are not retroactive within the period of time from the expiration date of its publication period to the date of making the approval of application for registration. however, where the mark was used with ill willdamages were caused to an applicant, the party with ill will shall be held liable for damages. this article provides a remedy for the losses caused by the use with ill will during the uncertainty period before the trademark is eventually approved for registration. in this case, the alleged infringement occurred earlier than the plaintiff acquired the exclusive right to use the trademark "拉菲". although its not stipulated in the trademark lawits related judicial interpretations that compensation should be made for the losses caused by infringement upon a famous trademark not registered in china, defendant mellowines had showed obvious subjective bad faith in using the mark "拉菲特". in view of the legislative intent of paragraph 2, article 36 of the trademark lawthe fact that the infringement upon unregistered famous trademark has indeed caused losses to the right owner, two defendants shall compensate the plaintiff according to relevant provisions of the trademark law since the occurrence of their infringement. given that its difficult to determine the actual losses suffered by the plaintiff, the profits earned by the defendantsthe licensing royalty for the registered trademark, shanghai intellectual property court took into ac the relevant circumstances of the caseordered two defendants to jointly compensate for the plaintiffs economic losses, including reasonable expenses, totaling rmb 2,000,000 yuan.
i. law of the peoples republic of china on application of law for foreign-related civil relations
article 50 the laws of the place where protection was requested shall govern the liability for infringement of intellectual property rights. the parties may also agree on ing to apply the laws of the place where the court is located after the infringement has occurred.
ii. tort law of the peoples republic of china
article 8 where twomore persons jointly commit a tort, causing harm to another person, they shall be liable jointlyseverally.
article 9 one who abetsassists another person in committing a tort shall be liable jointlyseverally with the tortfeasor.
iii. trademark law of the peoples republic of china
article 13. should any rights of a trademark well known to the relevant public be infringed, the trademark holder can follow the relevant provisions in this law to request the protection of the said famous trademark.
where a mark is a reproduction, imitation,translation of a third-partys famous trademark which has not been registered in chinawhere the goods are identicalsimilar, which may cause public confusion, no registration shall be edthe use of the mark shall be prohibited.
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article 14. a famous trademark, based on the parties request, shall be defined as a fact to be confirmed in each trademark case. the following factors shall be considered in making such a determination:
1) the degree of public recognition of the mark in its trading areas
2) how long the mark has been in use
3) the durationextent of advertisingpublicity of the mark,the geographical extent of the trading areas in which the mark is used
4) the protection records of the mark as a famous trademark and
5) other reasons for the fame of the trademark.
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article 36...
where the opposition cannot be established upon adjudicationthe registration is approved, the time of the exclusive right the trademark registration applicant has obtained to use the trademark is ed from the date on which the three months expires from the publication of the preliminary examination. actions where others use an identicalsimilar mark for the samesimilar goods are not retroactive within the period of time from the expiration date of its publication period to the date of making the approval of application for registration. where the mark is used with ill willdamages are caused to an applicant, the party with ill will shall be held liable for damages.
article 48 the use of trademarks as stipulated in this law refers to the affixation of trademarks to commodities, commodity packagingcontainers, as well as commodity exchange documentsthe use of trademarks in advertisements, exhibitions,for other commercial activities, in order to identify the source of the goods.
article 57 any of the following constitutes an infringement of the exclusive right to use a registered trademark:
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2) using a trademark that is similar to a registered trademark in connection with the same goods,that is identical withsimilar to a registered trademark in connection with the samesimilar goods, without the authorization of the owner of the registered trademark, which may cause public confusion
3) selling goods that violate the exclusive right to use a registered trademark
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6) help any others to infringe the exclusive right to use a registered trademark with intention by providing convenience for infringing the exclusive right to use the registered trademark
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article 63 the amount of damages for infringing the exclusive right to use a trademark shall be actual losses that the right owner has suffered as a result of the infringement during the period of the infringement where the losses suffered by the right owner cannot be determined, the amount of damages for trademark infringement shall be the profits that the infringer has earned as a result of the infringement during the period of the infringement where the losses suffered by the right owner,the profits earned by the infringer, cannot be determined, the amount of damages shall be determined based on a reasonable amount that would be paid for a licensing royalty for the trademark right. if there is malicious infringementan existence of serious circumstances, the amount may be more than twice, up to three times, of the aforesaid determined amount. the amount of damages will also include reasonable expenses the right owner has suffered to prevent the infringement.
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where the actual losses suffered by the right owner, the profits earned by the infringer,the licensing royalties of the trademark cannot be determined, a peoples court shall award damages up to rmb 3,000,000, depending on the facts of the case.
iv. interpretation of the supreme peoples court on certain issues concerning the application of law in the trial of civil cases involving trademark disputes
article 9 trademarks being identical, as mentioned in item (1) of article 52 of the trademark law, shall mean, through comparison between the alleged infringing trademarkthe plaintiffs registered trademark, the two marks are basically not different from a visual perspective.
trademarks being similar, as mentioned in item (1) of article 52 of the trademark law, shall mean, through comparison between the alleged infringing trademarkthe plaintiffs registered trademark, the two marks are similar to each other in the composition, pronunciation,meaning of the words contained in eachin the compositioncolors of the devices contained in each, in their overall structure after combination of the elements,in their three-dimensional shapecombination of colors, each of which is liable to cause the relevant public to misidentify the source of the goods concernedmistakenly believe that the source has a particular connection with the goods bearing the plaintiffs registered trademark.
article 10 a peoples court shall, in determining whether two trademarks are identicalsimilar in accordance with item (1) of article 52 of the trademark law, apply the following principles:
(1) use the normal level of attention of the relevant public as the criterion
(2) conduct both the overall comparison of the trademarksthe comparison of their primary elements, with the comparisons to be carried out respectively for each compared mark when being isolated from the other and
(3) in the case of determining whether the trademarks are similar, take into consideration the distinctivenessdegree of popularity of the registered trademark of which protection is requested.
v. interpretation of the supreme peoples court on several issues concerning the application of law in the trial of cases of civil disputes over the protection of famous trademarks
article 1 the term "famous trademark" as mentioned in this interpretation refers to a trademark widely known by the corresponding general public within china.
article 2 with regard to any of the following cases of civil disputes, in which a party concerned believes that its trademark is famoustakes this as the factual basis, the peoples court shall determine whether the trademark involved therein is famousnot in light of the concrete circumstances if it deems it really necessary:
(1) a trademark infringement lawsuit initiated on the ground of violation of article 13 of the trademark law
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article 5 to allege the popularity of a trademark, a party concerned shall, in light of the concrete circumstances of the case, provide the following proofs to demonstrate that its trademark is already famous at the time of occurrence of the trademark infringementunfair competition:
1. the market share, marketing regions, profits, taxes, etc. of the commodities using the trademark
2. the duration which the trademark has been continuously used
3. the manner, duration, extent, money input,geographical scope of publicitypromotion of the trademark
4. the records that the trademark has ever been protected as a famous trademark
5. the market reputation of the trademark and
6. other facts that can demonstrate that the trademark is famous.
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the peoples court shall, by taking into consideration other proofs for determining the popularity of the trademark, objectivelythoroughly examine such proofs as the length of use of the trademark, industrial ranking thereof, market investigation report, market value assessment report,whether it has ever been certified as a famous trademark.
(author: chen yingying, shanghai intellectual property court)
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