Feb. 9, 2018 Legal Daily Page 08: Cases Reporter Yu Dongming Correspondent Chen Yingying Recently, Shanghai Intellectual Property Court concluded a case concerning a dispute over trademark infringement between Chateau Lafite Rothschild and Shanghai Mellowines Development Co., Ltd (Mellowines) and Shanghai Safe International Logistics Co., Ltd (Safe International), ruling that the two defendants should immediately stop the infringement upon the plaintiff’s exclusive right to use the registered trademark “LAFITE”, cease the use of the logo “拉菲特” which is similar to “拉菲”, publish a statement on China Industry & Commerce Newsto eliminate negative effects, and jointly compensate the plaintiff RMB two million for economic losses including reasonable expenses. In October 1997, the trademark “LAFITE” applied by the plaintiff to the State’s trademark office was approved for registration, and has been valid since then. In May 2015, the plaintiff found the two defendants imported and sold plenty of wine bearing “CHATEAUMORONLAFITTE” and “拉菲特庄园”. The former was used on the front label and included the word “LAFITTE”, which differs from the plaintiff’s registered trademark “LAFITE” by only one letter. The latter was used on the back label and included “拉菲特”, which is similar to “拉菲” which can be identified as a non-registered well-known trademark of the plaintiff. The plaintiff filed a suit to the court, requesting the court to identify the trademark “拉菲”, which was not registered when the alleged infringement happened, as its non-registered well-known trademark, and order the defendants to stop infringement, publish a statement to eliminate effects, and compensate the plaintiff RMB five million for its economic losses as well as reasonable expenses paid for stopping the infringement. Defendants Mellowines and Safe Internationalargued that “拉菲” is not even close to be qualified as a non-registered well-known trademark, so the court should not and doesn’t have to identify it accordingly, and the plaintiff has no right to stop the defendant Mellowines from using the logo “拉菲特”; the logo used on the bottle of the wine imported and sold by Mellowines is neither identical with nor similar to the plaintiff's registered trademark involved and won’t confuse consumers on the source of the product; therefore, it didn’t infringe upon the plaintiff’s trademark. Through trial, Shanghai Intellectual Property Court held that the trademark “拉菲”, which the plaintiff requestedto be protected as a non-registered well-known trademark, is used on commodities in Class 33 -- wine, while the alleged-infringing products in this case is also wine, so the two are same products. “LAFITE” is the plaintiff’s registered trademark in China, and enjoys high popularityand is well known among relevant people. The “LAFITTE” in the “MORONLAFITTE” used on the front label of the alleged-infringing wine differs from the plaintiff’s registered trademark “LAFITE” only by one letter “T”. They are highly similar in both pronunciation and visual effect. Given that defendant Mellowines is a professional importer and distributor of wine and it imports and sells the plaintiff’s CARRUADESdeLAFITE and CHATEAULAFITEROTHSCHILD, it should know the plaintiff’s trademark “LAFITE” and its Chinese translation “拉菲”. But instead of translating the logo on the front label of the bottle in full, it translated the alleged-infringing wine into “拉菲特庄园干红葡萄酒” without making reasonable avoidance. Its bad faith is obvious, and “拉菲特” and the plaintiff’s non-registered well-known trademark “拉菲” are similar. Therefore, the logo “拉菲特” on the back of the bottle of the alleged-infringing wine infringed upon the plaintiff’s right to the non-registered well-known trademark “拉菲”. In view of the foregoing, the two defendants infringed upon the plaintiff’s exclusive right to use the registered trademark “LAFITE” and right to the trademark “拉菲”. Given that it’s impossible to determine the actual loss of the plaintiff caused by the infringement, the gains of the defendants from the infringement and the licensing fee of the registered trademark, Shanghai Intellectual Property Court ruled that the two defendants jointly compensate the plaintiff RMB two million for its economic losses including reasonable expenses.
