On April 24, 2017, China Supreme People's Court published the "2016 Top 10 IP Litigation Cases", electing the retrial case of Château Lafite Rothschild, represented by Unitalen, vs. Trademark Review and Adjudication Board and Nanjing Golden Hope Wine Co., Ltd. on trademark dispute.

This has been the 6th time for Unitalen cases being elected by the Supreme Court ever since the first publication of the Top 10 IP litigation cases in 2009. Earlier TOP 10 cases of Unitalen are:

- BMW vs. Century Baoma for infringement of well-known mark and unfair competition in 2009;

- LAFITE vs. Jinhongde for trademark infringement and unfair competition in 2011;

- Jianghuai Auto vs. RedSun for affirmation of non-infringement of trademark in 2011;

- Sany vs. Yonghe for infringement of well-known mark in 2012; 

- Powerdekor vs. Trademark Review and Adjudication Board & Hebei Guangtai over trademark dispute in 2013;

- Tencent vs. Qihoo 360 for unfair competition in 2014.

In addition, the case of Ashland Chemical, et al vs. Response-Chem, et al for patent infringement and trade secret represented by Unitalen was listed by the Supreme People’s Court as one of the 8 Typical IP Cases in 2013; and a number of other Unitalen cases can be found in the annual 50 typical cases selected by the Supreme Court.

This newly listed case of 拉菲莊園 (LAFEI MENOR) lasted for over 5 years, undergoing administrative review by TRAB, first instance trial at Beijing No. 1 Intermediate People 's Court, appeal at Beijing Higher People' s Court, and retrial by the Supreme Court. It involves protection of the renowned French luxury brand “LAFITE” in China, and complicated legal issues such as the corresponding relationship between the Chinese name“拉菲”and the registered trademark "LAFITE", and therefore has attracted great attention of various circles.

On August 2, 2016, the Supreme court broadcasted the 5-hour hearing through several official media platforms.

Case Summary

Château Lafite Rothschild (Appellant)，registrant of trademark LAFITE filed on October 10, 1996 for alcoholic beverages in Class 33, applied for invalidation of disputed trademark “拉菲莊園”, filed on April 1, 2005 by Nanjing Golden Hope Wine Co. Ltd (“Golden Hope”).

TRAB decided that the disputed mark shall be revoked due to the fact that “拉菲” had been widely known as the Chinese name for “LAFITE” by Chinese consumers prior to the filing date of the disputed mark, hence the disputed mark “拉菲莊園”has constituted similar mark to “LAFITE” and violated Article 28 of China Trademark Law (2001 version)

Golden Hope initiated administrative litigation against the TRAB, but Beijing First Intermediate People 's Court affirmed the TRAB decision made by TRAB. Golden Hope further appealed to Beijing Higher People' s Court. The appeal court found the evidence insufficient to prove that the cited mark had enjoyed high reputation in China prior to the filing date of the disputed mark, and that the relevant public had been able to make corresponding identification of the cited mark and the Chinese “拉菲”. In light that the disputed trademark has been registered and put into use for over ten years, from the perspective of maintaining the established market order, the appeal court decided that the registration of the disputed mark shall be maintained.

Appellant applied to the Supreme Court for retrial. The Supreme People’s Court accepted the case and issued the retrial verdict on December 23, 2016, which revoked the second-instance and sustained the first-instance verdict as well as the TRAB decision.  

According to the Supreme Court, the cited mark “LAFITE” has established a high level of reputation through years of commercial business activities, and a solid connection between "拉菲" and "LAFITE" has been built; therefore the disputed mark and the cited mark have constituted similar trademarks in respect of similar or identical goods. In addition, for a trademark that has been registered and used for a certain period of time, whether it has established a relatively high market reputation and formed its own relevant public group shall not be determined just by the single factor of time span of use; whether its relevant public has been made capable of distinguishing the mark from the other related marks through its use, and whether there is any likelihood of confusion, shall serve as the criteria for determination, which however could not be proven in this case. 

The retrial verdict covers discussions over composing elements of trademarks, degree of similarity in whole, the distinctiveness and reputation of the relevant trademarks, the determination of a stable corresponding relationship, and the relevant public groups, and, based on all the above mentioned, specifies the criteria for determination of similarity between Chinese and English trademarks, which provides vitally important guiding significance.