A Chinese hotel named Beijing Lafeite Castle Hotel Co., Ltd. (Lafeite Hotel) in 2007 filed for the registration of the mark “拉斐特” (pronounced as “Lafeite” in Mandarin) for use on restaurant and hotel related services under Class 43, which the China Trademark Office (CTMO) approved for registration in 2015.
Château Lafite Rothschild (Rothschild), the producer of the globally famous wine brand “LAFITE” (“拉菲” in Chinese, pronounced as “Lafei” in Mandarin), filed for the cancellation of the disputed mark before the Trademark Review and Adjudication Board (TRAB) claiming that, as its prior registered trademarks “LAFITE” and “拉菲” (“Lafei”) designated for use on wine products have attained well-known status, the disputed mark “拉斐特” (“Lafeite”), which is similar to the mark “拉菲” (“Lafei”), may damage Rothschild’s interests.
[Note: according to Article 13 of the Trademark Law, well-known trademarks that are registered in China are entitled to cross-class protection to the extent that no mark that is a copy, imitation or translation of said well-known mark may be registered for use in whatever class of goods, if doing so may mislead the public or otherwise damage the interest of the registrant of the well-known mark.]
The TRAB however handed an unfavorable decision holding that the evidence adduced is insufficient to prove that Rothschild’s trademarks “LAFITE” and “拉菲” (“Lafei”) had attained well-known status in China prior to the registration of the trademark; meanwhile, since the restaurant services under Class 43 and the wine products are dissimilar, the disputed mark, as applied for use on restaurant related services, is unlikely to damage Rothschild’s interests.
Dissatisfied, Rothschild contested the TRAB’s decision before the Beijing IP Court. The court rendered judgment in favor of Rothschild holding that, firstly, the evidence sufficiently prove that Rothschild’s prior registered trademarks “LAFITE” and “拉菲” (“Lafei”) have attained well-known status on wine products; and secondly, as the disputed mark “拉斐特” (“Lafeite”) is similar to the mark “拉菲” (“Lafei”), such mark applied, as for use on restaurant related services, may mislead consumers and may dilute the distinctiveness of Rothschild’s well-known trademark “拉菲” (“Lafei”), thereby damaging Rothschild’s interests. Accordingly, the court held that the disputed mark should be cancelled in accordance with Article 13 of the Trademark Law.
Undeterred, the TRAB and Lafeite Hotel appealed before the Beijing High Court. The court recently rendered judgment dismissing the appeal and sustaining the lower court’s aforesaid findings.
[Source: cip news]
Disclaimer: This article was first published on LinkedIn by James Luo, https://www.linkedin.com/pulse/lafite-succeeds-cancelling-lafeite-used-hotel-luo-罗正红-ph-d-in-ip/