>EN-LAWOFFICE>Cases>Trademark Cases>Unitalen Client Lafite Won the Trademark Invalidation Case Involving Chinese Trademark Imitating the Translation of English Trademark and Cross-Class Protection for Well-known Trademark

Unitalen Client Lafite Won the Trademark Invalidation Case Involving Chinese Trademark Imitating the Translation of English Trademark and Cross-Class Protection for Well-known Trademark

Modifytime:2019-06-27

Case Background:

Beijing Lafayette Castle Hotel Co., Ltd., on its self-operated website, claims to be “a melting spot of wine culture, French architecture, sculpture and garden art; and an ideal venue for large-scale performance event, cocktail party, exhibition, high-end conference and Chinese or Western style wedding”. Lafayette Castle had applied for registration of a large number of “LAFFITTE”, “拉斐特” and “拉斐特城堡 CHATEAU LAFFITTE” in Class 43 “Residential (Hotels Homestay)” since 2007. Apparently, these trademarks are the copy, imitation and translation of the "Lafite" and "拉菲" trademarks owned by our client, Lafite. Lafite first initiated the invalidation request against the related trademarks registered earlier, including the Chinese “拉斐特” trademark.

 

However, the Trademark Review and Adjudication Board ruled against the invalidation request submitted by Lafite on October 8, 2015, they held that the disputed trademark “拉斐特” and the cited trademark “LAFITE” were observed with big difference visually in whole, and the services designated for use on of the disputed trademark differs greatly from the well-known products of “LAFITE” trademark, so it’s ruled to maintain the registration of “拉斐特” trademark. In refusal to the acceptance of ruling, Lafite filed a lawsuit with the Beijing IP Court.

 

Court decision:

The Beijing IP Court of the first instance and the Beijing Higher People's Court of the second instance all held that the “LAFITE” trademark had been famous enough to be recognized as “well-known” for wine products prior to the filing date of the disputed mark, May 17, 2007. Through many years of commercial business activities, Lafite, in reality, has established a strong connection between “拉菲” and “LAFITE”. The relevant public in China also refers to “LAFITE” as “拉菲”. Under this circumstance, the trademark “拉斐特” in this case is a copy, imitation and translation of the cited trademark “LAFITE”. The use of the trademark on the designated “buffet cafeterias, restaurants, residences (hotels, boarding houses), cocktail reception services, bars” and other services is misleading to the public, therefore the trademarks shall be declared invalid.

 

Typical meaning:

The typical significance of this case is that the disputed Chinese trademark is recognized as copy, imitation and translation of the well-known English trademark, and the well-known trademark is protected across class to the goods and services that are not closely connected.

 

Although the case is mostly about the application of the 3rd paragraph of Article 13 of the Trademark Law, it also involves the determination of the similarity of trademark, the unique correspondence between the Chinese and English trademarks, the determination of the protection scope of the well-known trademark, and the measurement of malicious intent of the trademark applicant. These issues must be considered in full in preparation for demonstration and proof, each of them is indispensable.

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