HongFangLaw ~ Chinese IP Law Updates ~ n’ 3
08 August 2016

Review of “Chateau Lafite” Trademark Opposition
by the Supreme Court

(source: zhichanli)

Chateau Lafite Rothschild (the “Chateau Lafite”) disagreed with administrative judgment (2014) Gao Xing (Zhi) Zhong Zi No. 3129 by Beijing Higher People’s Court with respect to trademark dispute between Trademark Review & Adjudication Board (the “TRAB”) of Trademark Office under State Administration for Industry and Commerce and Nanjing Golden Hope Wines Co., Ltd. (the “Golden Hope”), and subsequently applied for supervisory review. The Supreme People’s Court rendered a ruling for retrial on January 7, 2016. No. 5 Tribunal of the Supreme People’s Court heard the case in open session dated August 2.

Background:

On April 1, 2005, Golden Hope filed a registration application concerning trademark No. 4578349拉菲庄园 (Chinese translation for “Chateau Lafite”) (hereinafter the “Disputed Mark”), purported to be used on goods in class 33 “wine, alcoholic beverages, fruit extracts (alcoholic). The Disputed Mark was approved for registration on November 14, 2007, with ten-year exclusive-use period from November 14, 2007 to November 13, 2017.

Ch?teau Lafite owns TM No. 1122916 “LAFITE” (the “Cited Mark”) in class 33 Alcoholic beverages (except beers) (appl. date: October 10, 1996; reg. date: October 28, 2007). Query result from official website of State Trademark Office shows the Cited Mark is now in the process of revocation on the ground of non-use for three consecutive years.

On August 24, 2011, Ch?teau Lafite submitted an application to TRAB in order to revoke the Disputed Mark. On September 2, 2013, the TRAB delivered a ruling Shang Ping Zi [2013] No. 55856, while maintaining the Disputed Mark should be annulled. Because of disagreement, Golden Hope brought an administrative action before the No. 1 Intermediate People’s Court of Beijing. However, the Court decided to sustain the aforesaid decision after hearing. Golden Hope thus appealed against such ruling with the Higher People’s Court of Beijing. Upon review, the Higher Court opined that (i) With “拉菲” serving as distinctive part, the Disputed Mark completely consists of four Chinese characters “拉菲庄园”, whilst the Cited Mark is made up by foreign letters “LAFITE”; (ii) Significant differences exist in terms of appearance and pronunciation between the Disputed Mark and the Cited Mark; and (iii) Judging by available evidence, it is difficult to determine that before the application date of the Disputed Mark, the Cited Mark had gained popularity in Chinese mainland market and relevant public are able to distinguish the Cited Mark and “拉菲”. The former decisions (2013) Yi Zhong Zhi Xing Chu Zi No. 3731 by the Intermediate People’s Court, Shang Ping Zi, [2013] No. 55856 by the TRAB were subject to revocation.

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