Lafite Rothschild Winery (hereafter referred to as “Lafite Rothschild”) has two world-renowned wines – “CHATEAU LAFITE ROTHSCHILD” and “CARRUADES de LAFITE”. In China, they are also known as "Big Lafite" and "Little Lafite". Although Lafite Rothschild applied for registration of the English logo "LAFITE" early, it did not register the corresponding Chinese translations including "拉菲" and "拉斐" (both as “La Fei” in pinyin), resulting in "拉斐" being registered in Hong Kong in 2002 by a company named “France Rafael Wine (Asia) Co., Ltd.”; because the other party submitted the application on an earlier date, Lafite Rothschild failed to invalidate the "拉斐" trademark even after escalating the litigation to the trial by the Supreme People’s Court. This had become a hindrance to Lafite Rothschild's endeavor to register the Chinese trademarks including "拉菲".
In June 2015, Lafite Rothschild filed to the Trademark Office for the registration of the “拉菲珍宝” (paraphrase as “Lafite Treasures”) trademark designated for use in “wines and other goods” in Class 33. In May 2016, the Trademark Office cited 5 trademarks including the afore mentioned “拉斐” trademark to reject the application (the other 4 trademarks were also invalidated during the proceeding of this case). Lafite Rothschild thus filed for the refusal review with the Trademark Review and Adjudication Board (TRAB). However, the TRAB found that “the application trademark and the reference trademark are composed and pronounced similarly. The two trademarks, if coexist in the market, will make the consumers confused with and misidentifying the sources of goods., thus it has constituted trademark similarity in the same or similar goods. "
The Court’s Ruling
Unitalen, representing Lafite Rothschild, appealed to the court, the Beijing Intellectual Property Court of the first-instance and the Beijing Higher People's Court of the second instance all ruled to revoke the ruling of the TRAB and held that the application trademark “拉菲珍宝” and the reference trademark “拉斐” do not constitute similarity, the coexistence in Class 33 “wines and other goods” will not cause confusion and misidentification among consumers.
The typical significance of this case is that the popularity of the application trademark is included in the consideration for the determination of similarity of the trademark and whether it is easy to cause confusion and misidentification in the review of refused trademark. In the past cases, it was rare to see in the judgment of a refusal review the expression of “existing market share formed” of an application trademark, and more importantly, the examination of the similarity of the mark itself. However, the popularity of the trademark and the trademark itself are integrated. The relevant consumers, in identifying the source of goods and services by a trademark, will also consider its popularity as one of the factors. Therefore, in reviewing the similarity of a trademark, it is objective, fair and realistic to consider the evidence of the popularity of the trademark before its filing date.