Unitalen Won the Invalidation of “LAFITTE” Representing CHATEAU LAFITE ROTHSCHILD

April 19, 2019

Case Summary

In 2011,Societe Civie Exploitation Chateau Lafitte (hereinafter referred to as “Chateau Lafitte”) applied for registration of “Chateau Lafitte and Castle Graphics, “Lafitte Mengin”, “Chateau Lafitte Mengin” and “Chateau Lafitte”, which was rejected by the Trademark Office with reference to the cited trademark “Lafite”, owned by Unitalen client, Chateau Lafite Rothschild. Chateau Lafitte applied for refused trademark review and obtained preliminary announcement, within the 3 months of which, Chateau Lafite Rothschild made opposition citing two prior trademarks “Lafite” and “Chateau Lafite Rothschild” that were registered in 1996 and 1997 respectively.  On August 19, 2015, the Trademark Office found the opposition was not established so the opposed trademarks were approved for registration. Chateau Lafite Rothschild then filed for invalidation declaration; in December 2016, the Trademark Review and Adjudication Board (TRAB) held that the 4 trademarks containing “LAFITTE” are similar to “Chateau LAFITE ROTHSCHILD” and the similarity to “LAFITE” is not required for comment, so declared invalidation. In disagreement, Chateau Lafitte initiated administrative litigations before the Beijing IP Court and the Beijing Municipal High People’s Court for the reasons that the results of the previous Trademark Office refusal review decision and the TRAB invalidation decision are inconsistent, and “LAFITE” and “LAFITTE” had coexisted in France for long time.



Court Judgement

In Feb 2019, Beijing Municipal High People’s Court made the final judgment, maintaining the invalidation ruling made by the TRAB; and Beijing IP Court made the ruling of first instance to maintain the TRAB decision as well, as both courts held that the 4 trademarks containing “LAFITTE” are similar to both “LAFITE” and “CHATEAU LAFITE ROTHSCHILD” trademarks. The case at the Beijing IP Court is currently in appeal, it’s believed that the ruling of the second instance will be the same as that of the Beijing Municipal High People’s Court for the same case.