When the CHATEAU D’AUSSIERES wines of Lafite had just entered the Chinese market, the distributors tried to find a proper and catchy Chinese name for it. “CHATEAU” is an existing vocabulary in French, meaning “wine, castle”, and “D’” is a preposition in French that refers to belonging, and has no practical meaning, so "奥希耶" (“Ao-xi-ye” in pinyin) was selected as the Chinese translation of "AUSSIERES", and it has been well known to the public after years of word of mouth in the related fields. However, without timely registration, in 2010, the "奥希耶" trademark was squatted by Fuzhou Helanshan Civic Wine Sales Co., Ltd with designation in "wine and other goods”.
On December 1, 2015, CHATEAU D’AUSSIERES applied for invalidation of No. 8386240 “奥希耶” trademark with CNIPA (formerly the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce - TRAB). The TRAB held that there was significant difference between “奥希耶” and the reference trademark “CHATEAU D'AUSSIERES” in terms of composition, pronunciation and overall appearance, and thus maintained the trademark at dispute.
CHATEAU D’AUSSIERES refused to accept the ruling and filed an administrative lawsuit against it with the Beijing IP Court.
The Court's Ruling
On March 29, 2018, the Beijing IP Court made a first-instance judgment, which held that CHATEAU D’AUSSIERES had made extensive use of the "CHATEAU D'AUSSIERES" and "奥希耶" logos, with a high reputation, "AUSSIERES" and "奥希耶” have formed a corresponding relation. Due to the stable connection between these two, if the registration of the trademark is approved, it will inevitably lead to confusion and misidentification among the relevant public. Therefore, the disputed trademark and the reference trademark have constituted similarity. In March 2019, the final judgment of the Beijing Higher People's Court upheld the judgment of the first instance.
The typical significance of this case is to break the inherent criteria of judging the similarity of trademarks, i.e. Chinese and foreign trademarks shall constitute similarity if they have formed a stable correspondence in between. This has provided a solution to combating malicious trademark squatting of Chinese translations of well-known foreign trademarks. In judging the similarity of trademarks, it shall not be limited to physical comparison, but also consider the popularity of foreign trademarks, the perception of relevant consumers, and the malicious intent of squatters.