French "Lafite" (translated as "拉菲" in Chinese) wines are well-known and favored by the market. In addition to the imitation of their red wine products, many infringers imitate the brand in food and/or beverage industries, and try to register the trademarks of "Lafite" and "拉菲" to legalize the infringement.
The defendant in this case is one of those infringers, which has registered two trademarks as in Class 29 for "jelly, soy milk, milk products" and Class 30 for "coffee, candy, oatmeal food, soy milk” and other products.
Entrusted by Lafite, Unitalen applied for invalidation of the two above-mentioned trademarks and won the case after invalidation procedures, as well as the litigations of first instance and second instance.
Both the Guangzhou IP Court of first instance and the Guangdong Higher Court of second instance found that:
1) At the time of the alleged trademark infringement, No. 1122916 and No. 6186990 trademarks of Lafite (the plaintiff) were well-known domestically in wine and other products and were already well-known by the relevant public and should therefore be considered as well-known trademark;
2) The alleged infringement marks were used on goods in Class 29 and Class 30, falling into duplication and imitation of the aforementioned two well-known trademarks, which has infringed on their exclusive right to use;
3) The defendant had advertised the alleged infringing goods on the website using the alleged infringing domain name, and used them for e-commerce transactions, which can easily mislead the relevant public and harm the plaintiff’s interests. Therefore, it shall stop the infringement and bear the liability for the indemnity of economic losses.
4) The defendant's defense of "legitimate source" cannot be established due to lack of evidence.
Based on the above mentioned, both the courts ordered the defendant to immediately stop the infringement, cancelled the domain names including www.lafeifood.com and www.拉非食品.com , and pay the indemnity of economic losses for a total of 3 million yuan within 10 days from the effective date of the judgement.
This is another typical case of prohibiting the use of a registered trademark registered after a prior well-known trademark.