Trademark Revision Forum | Analysis of Typical Cases and Articles Related to Articles 13 and 14 of the Trademark Law

Fourth Amendment of the Trademark Law Special Topic

Articles 13 and 14 of the Trademark Law are legal provisions concerning the protection of well-known trademarks. Article 13 stipulates special protection for well-known trademarks, while Article 14 mainly concerns the determination of well-known trademarks. In 2001, China's Trademark Law explicitly stipulated the special protection of well-known trademarks in the text. Many people believe that this is a necessary choice for us to respond to "entry into the WTO" and comply with relevant international treaties, but the role of well-known trademark protection provisions in strengthening rights protection and making up for the shortcomings of the registration system cannot be ignored.

The legal protection of well-known trademarks itself involves many issues and is very complex. Article 13 of the Trademark Law divides well-known trademarks into two categories: well-known trademarks not registered in China (hereinafter referred to as "unregistered well-known trademarks") and well-known trademarks already registered in China (hereinafter referred to as "registered well-known trademarks"). For unregistered well-known trademarks, the law provides protection for them on identical or similar goods, while for registered well-known trademarks, the law provides cross-category protection. However, in any case, the primary issue facing both is how to determine well-known trademarks. Although Article 14 of the Trademark Law clearly provides methods and standards for determination, difficult cases still emerge endlessly in judicial practice. In the "Sophia case," the judge clearly pointed out that the factors listed in the first paragraph of Article 14 of the Trademark Law for determining well-known trademarks are not indispensable. If considering some factors is sufficient to determine that a trademark is well-known, there is no need to mechanically consider all of them; in the "Xinhua Dictionary case," the disputed trademark is very special, the prominence of the trademark is the focus of the dispute, and the determination of well-known trademarks is even more difficult.

In addition, when the subject has registered "one trademark for multiple categories," whether the "cross-category protection path for registered well-known trademarks" can be used in litigation with the "general trademark infringement path" is also a problem. The "Sophia case" responds well to this problem, giving the right of choice to the right holder. As for the protection of unregistered well-known trademarks, whether damages are applicable is explained in detail in the "Lafite case"; how to judge "copying, imitation, translation" is involved in both the "Lao Gan Ma case" and the "Lafite case"; how to balance the protection of well-known trademarks and prevent the monopoly and abuse of rights is discussed in the judgments of the "Xinhua Dictionary case" and the "Lafite case".

I. "Sophia" Trademark Infringement and Unfair Competition Dispute Case (This case was selected as one of the Top Ten Cases of Intellectual Property Judicial Protection in Zhejiang Province in 2017)

Sophia Home Furnishing Co., Ltd. v. Nanyang Sophia Integrated Ceiling Co., Ltd. and Lv Mou et al. Case of Infringement of Trademark Rights and Unfair Competition, Civil Judgment (2016) Zemin Final No. 794 of Zhejiang Provincial Higher People's Court

(1) Basic Case Facts

In 2003, the predecessor of Sophia Home Furnishing Co., Ltd. (hereinafter referred to as "Sophia Company"), Guangzhou Ningji Decoration Industry Co., Ltd., acquired and began using the No. 1761206 "Sophia" trademark, with the specified goods being "cupboard; non-metallic door devices", etc., in Class 20. In 2012, the trademark registrant was changed to Sophia Company. From 2011 to 2016, the trademark was successively recognized as a famous trademark of Guangzhou and a well-known trademark. Sophia Company promoted the "Sophia" brand in various ways and once hired celebrity Shu Qi as the spokesperson for its product advertisements. In 2014, Sophia Company obtained approval to register the No. 4287169 "Sophia" trademark, with the specified goods being "metal doors; metal partitions", etc., in Class 6. The official website of Sophia Company is www.suofeiya.com.cn, sogal.com.cn.

The shareholders of Jiaxing Simi Integrated Ceiling Co., Ltd. (hereinafter referred to as "Simi Company") and Nanyang Sophia Integrated Ceiling Co., Ltd. (hereinafter referred to as Nanyang Sophia Company) are all Lv Mou, etc. In 2015, Lv Mou obtained approval to register trademark No. 14504404 "sofyell" and trademark No. 14504405 "sofyell", with the specified goods being in Class 11 and Class 6 respectively.

Multiple notarized documents provided by Sophia Company show that Simi Company and Nanyang Sophia Company used the "Sophia" or "Sofia" logo, which is the same as or similar to the trademark in question, on the "sofyell.com" website, the relevant WeChat official account, and the storefront of the Harbin physical store. In addition, Simi Company and Nanyang Sophia Company also published photos identical to the photos of Sophia Company's Shu Qi image spokesperson on their website, indicating that Shu Qi is the spokesperson for their products. Sophia Company sued the court on the grounds of trademark infringement and unfair competition, requesting that: Simi Company and Nanyang Sophia Company immediately cease trademark infringement and unfair competition, stop using and cancel the www.sofyell.com domain name; Nanyang Sophia Company change its company name and WeChat official account name; Simi Company and Nanyang Sophia Company jointly compensate Sophia Company for economic losses and reasonable expenses for rights protection of 1 million yuan; Simi Company and Nanyang Sophia Company publish a statement of apology on the China Intellectual Property Newspaper and the Sina Home website to eliminate the impact.

(2) Reasons for Selection

The original intention of the well-known trademark protection system is to provide high-intensity protection for trademarks with high brand awareness. When grasping the standard for judicial determination of well-known trademarks, it is necessary to prevent the phenomenon of the proliferation of well-known trademarks caused by overly loose standards in the past, and also to avoid overcorrection, which leads to the inability to effectively protect the legitimate rights and interests of the trademark owner. The right holder in this case has registered multiple "Sophia" trademarks in different categories of goods. Among them, the defensive trademarks that are not actually used have the same category of goods as the infringing products, but the right holder chooses to claim rights based on the trademark with the highest brand awareness and different categories of goods from the infringing products. The first-instance court believed that under this circumstance, the right holder has no right to choose to obtain relief through cross-category protection, so there is no need to determine whether the trademark is well-known. The second-instance court, however, The right holder has the right to choose the most advantageous trademark as the basis for litigation according to its own trademark system and litigation strategy, otherwise it will violate the original intention of well-known trademark protection. Therefore, it changed the judgment to establish trademark infringement, fully protecting the interests of the trademark owner and reflecting the value orientation of strict protection.

After trial, Hangzhou Intermediate People's Court held that: the alleged infringing products are integrated ceilings, and the ceiling modules and electrical modules contained therein belong to Class 6 and Class 11 goods respectively. Sophia Company claims cross-category protection for the No. 1761206 "Sophia" trademark registered in Class 20 goods, but it has also registered the No. 4287169 "Sophia" trademark in Class 6 goods, and can fully claim rights based on the latter trademark, so there is no need to determine whether the No. 1761206 "Sophia" trademark is well-known in this case. Moreover, although the No. 1761206 "Sophia" registered trademark has high brand awareness, Sophia Company has not provided records of the protection of this trademark and evidence that this trademark enjoys extremely high market reputation in China. Therefore, even if it is necessary to determine whether the No. 1761206 "Sophia" registered trademark is well-known, the existing evidence is not enough to prove that the trademark was well-known when the alleged infringement occurred.

After the first-instance judgment, Sophia Company, dissatisfied, appealed to the Zhejiang Provincial Higher People's Court.

After trial, the Zhejiang Provincial Higher People's Court held that: the trademark owner has the right to choose the trademark most advantageous to it as the basis for litigation according to its own trademark system and litigation strategy. If the court, in order to avoid determining a well-known trademark, does not allow the right holder to choose to seek more favorable relief through cross-category protection of a well-known trademark, then its legitimate interests will be difficult to fully protect, which also runs counter to the original intention of the judicial determination of the well-known trademark system. The No. 4287169 "Sophia" trademark in this case is a defensive trademark, and because it has not been used for a long time, its distinctiveness and brand awareness are relatively low, and the law has relatively weak protection for it. Sophia Company's claim of rights based on the No. 1761206 "Sophia" trademark is a legitimate exercise of its trademark rights, because the specified goods category of this trademark is Class 20, which does not belong to the same or similar goods as the alleged infringing products. Therefore, in the case of the right holder requesting cross-category protection, the court needs to determine whether the trademark in question is well-known. Although Sophia Company did not submit the protection record of the trademark in question, the factors for determining well-known trademarks stipulated in Article 14 of the Trademark Law are not indispensable. If considering some factors is sufficient to determine that the trademark is well-known, there is no need to mechanically consider all its factors one by one. In this case, combined with the sales of relevant goods, the use time, publicity, market reputation, and other relevant facts of the trademark in question, the evidence submitted by Sophia Company is sufficient to prove that the trademark in question was in a well-known state when the alleged infringement occurred. Simi Company and Nanyang Sophia Company, knowing the trademark in question, still used the same or similar logo, subjectively had malicious attachment, and objectively was sufficient to cause confusion, weakened the distinctiveness of the well-known trademark, and damaged the market reputation of the well-known trademark, constituting trademark infringement.

Relevant trademark registration information of this case:

Commercial Press Limited Company v. Chinese Language Teaching Publishing House Co., Ltd. "Xinhua Dictionary" Trademark Infringement and Unfair Competition Dispute Case, Beijing Intellectual Property Court (2016) Jing 73 Min Chu 277 Civil Judgment

(1) Basic Case Facts

Commercial Press Ltd. (hereinafter referred to as "Commercial Press") and Chinese Language Teaching Publishing House Co., Ltd. (hereinafter referred to as "Chinese Language Publishing House") are both publishing houses. Since 1957, Commercial Press has continuously published the prevailing versions of Xinhua Dictionary up to the 11th edition. From 2010 to 2015, the average market share of Xinhua Dictionary published by Commercial Press exceeded 50% in the dictionary market. As of 2016, the global circulation of Xinhua Dictionary published by Commercial Press exceeded 567 million copies, earning it multiple honors, including the Guinness World Record for "Most Popular Dictionary" and the Guinness World Record for "Best-Selling Book (Regularly Revised)".

Commercial Press claims that Chinese Language Publishing House's production and sale of the "Xinhua Dictionary" infringes upon Commercial Press's unregistered well-known trademark rights for "Xinhua Dictionary," and that Chinese Language Publishing House's use of the distinctive packaging of Commercial Press's Xinhua Dictionary (11th edition) constitutes unfair competition. It requests the court to order Chinese Language Publishing House to immediately cease its infringement of trademark rights and unfair competition; publish a statement in relevant media such as China News and Publishing Radio and Television Newspaper to eliminate the impact; and compensate Commercial Press for economic losses of 3 million yuan and reasonable expenses of 400,000 yuan.

Chinese Language Publishing House argues that "Xinhua Dictionary" has evolved from a national project name into a common name for dictionaries in the public domain, and Commercial Press has no right to claim trademark rights for "Xinhua Dictionary" or to prohibit others from using it legitimately. The packaging of the involved Xinhua Dictionary (11th edition) does not constitute "distinctive packaging" as defined in Article 5, Paragraph 2 of the Anti-Unfair Competition Law, and will not cause confusion or misidentification among purchasers. Commercial Press's lawsuit aims to monopolize the common dictionary name "Xinhua Dictionary" through a judicial ruling, with the improper purpose of excluding competition and achieving a monopoly in the dictionary market.

The first-instance court held that "Xinhua Dictionary" has distinctive characteristics of a trademark and has reached the level of a well-known trademark through use by Commercial Press, constituting an unregistered well-known trademark. Chinese Language Publishing House's copying and imitation of Commercial Press's unregistered well-known trademark "Xinhua Dictionary" is likely to cause confusion and constitutes trademark infringement. The packaging of Commercial Press's Xinhua Dictionary (11th edition) constitutes distinctive packaging of a well-known commodity, and Chinese Language Publishing House's unauthorized use of the distinctive packaging of Xinhua Dictionary (11th edition) constitutes unfair competition. The first-instance court ruled that: Chinese Language Publishing House shall immediately cease the infringement of trademark rights and unfair competition; publish a statement in China News and Publishing Radio and Television Newspaper and other relevant media to eliminate the impact; and compensate Commercial Press for economic losses of 3 million yuan and reasonable expenses of more than 270,000 yuan.

After the first-instance judgment in this case, the parties reached a settlement agreement, and the first-instance judgment became effective.

(2) Court Evaluation

This case is a typical example involving the protection of unregistered well-known trademarks, involving multiple difficulties in fact-finding, law application, and interest balancing. 1. Against the background of the historical and phased nature of logos with "Xinhua" in China, this case establishes a judicial standard for determining whether commodity names such as "Xinhua Dictionary," which have both product and brand attributes, have distinctive trademark characteristics. 2. This case determines that "Xinhua Dictionary" constitutes an unregistered well-known trademark based on factors such as the public's awareness of "Xinhua Dictionary," the duration of its use, sales volume, publicity scope, and protection records. 3. While granting protection to the unregistered well-known trademark "Xinhua Dictionary," this case pays attention to balancing it with the normal business management order of the publishing industry and the promotion of the correct dissemination of cultural knowledge. It clearly points out that the Trademark Law's protection of the exclusive right to use a trademark is aimed at the trademark itself, not the commodity to which the trademark is attached. Granting Commercial Press the exclusive right to use the "Xinhua Dictionary" trademark does not grant it the exclusive right to publish dictionary-type dictionaries, and will not lead to a monopoly in the dictionary industry. 4. This case, through trademark protection, encourages trademark right holders to better fulfill their legal obligations to guarantee product quality and their social responsibility in disseminating knowledge of the Chinese language and characters, which is more conducive to the development of China's market economy and cultural industry. 5. This case has made a determination on the liability for damages for infringement of unregistered well-known trademarks, which has important legal significance in the new era of strengthening intellectual property protection.

In this case, the court determined the distinctiveness of the "Xinhua Dictionary" trademark and also determined that it constitutes a well-known trademark. However, regarding whether it can be granted protection as an unregistered well-known trademark, Chinese Language Publishing House argued that: "Granting "Xinhua Dictionary" protection as an unregistered well-known trademark will disrupt the normal business management order of the publishing industry and harm the dissemination of knowledge." To this, the court gave a full response in its judgment reasoning: The trademark right protected by the Trademark Law is the right to the exclusive use of the trademark itself, and this exclusive use is directed at the trademark itself, not the commodity to which the trademark is attached. Even if the unregistered well-known trademark protection is granted to Commercial Press for "Xinhua Dictionary," it only grants the exclusive right to use the "Xinhua Dictionary" trademark, not the exclusive right to publish related dictionaries, and will not directly cause the so-called monopoly in the dictionary industry, nor will it disrupt the normal business management order of the dictionary market. If Commercial Press's actual business conduct constitutes a monopoly and meets the conduct prohibited by the Anti-Monopoly Law of the People's Republic of China, relevant market competitors may protect their legitimate rights and interests and a fair market competitive order in accordance with the aforementioned legal provisions.

In addition, this court also considers the particularity of dictionaries as reference books. Literacy dictionaries not only relate to the correctness of learning Chinese characters and the inheritance and accumulation of Chinese language knowledge, especially for primary and secondary school students, but also involve the dissemination and development of national cultural knowledge. Therefore, the correctness and authority of dictionary content are crucial. Trademarks are an important way to guarantee the quality of commodity content, and trademarks are the carriers of the reputation of the commodities they identify.

"Xinhua Dictionary," as a trademark, its reputation is also closely related to its content. As the holder of the unregistered well-known trademark "Xinhua Dictionary," Commercial Press not only enjoys rights but also bears the obligation of the trademark right holder under the Trademark Law to guarantee the quality of the goods it provides and the social responsibility of disseminating correct Chinese language and character knowledge commensurate with the reputation of its well-known trademark. Granting protection to "Xinhua Dictionary" as Commercial Press's unregistered well-known trademark is not only to protect the identification source and accumulated reputation generated by Commercial Press in the operation of "Xinhua Dictionary" dictionary commodities, but also to make it assume legal obligations and social responsibilities through trademark protection.

Therefore, granting protection to "Xinhua Dictionary" as Commercial Press's unregistered well-known trademark will not only not harm the dissemination of knowledge, but on the contrary, in order to maintain the good brand reputation of "Xinhua Dictionary," Commercial Press will pay more attention to improving the quality of its published and distributed dictionaries with the "Xinhua Dictionary" logo, and promote the widespread dissemination of correct knowledge.

"Laoganma" Trademark Infringement Dispute (This case was selected as one of the Top Ten Typical Intellectual Property Cases of Beijing Courts in 2017)

Guizhou Nanming Laoganma Flavor Food Co., Ltd. et al. v. Beijing Carrefour Commercial Co., Ltd. Trademark Infringement Dispute Case, Beijing Higher People's Court (2017) Jingmin Final No. 28 Civil Judgment

(1) Basic Case Facts

Beijing Auchan Supermarket Co., Ltd. (hereinafter referred to as "Beijing Auchan Company") sold beef stick products (hereinafter referred to as "the products involved in the case") produced by Guizhou Yonghong Company. The upper part of the front of the packaging of the product is marked with the "Bull Head Brand and Figure" trademark owned by Guizhou Yonghong Food Co., Ltd. (hereinafter referred to as "Guizhou Yonghong Company"), and the middle part is printed with the words "Laoganma Flavor". The back of the packaging indicates that the product name is "Laoganma Flavor Beef Stick". Guizhou Nanming Laoganma Flavor Food Co., Ltd. (hereinafter referred to as "Guizhou Laoganma Company") claims that its registered "Laoganma" trademark No. 2021191 (hereinafter referred to as "the trademark involved in the case") registered in Class 30 for fermented black beans, chili sauce (seasoning), and fried chili oil, is a well-known trademark. Guizhou Yonghong Company's use of the trademark involved in the case on the products involved in the case infringes on Guizhou Laoganma Company's exclusive right to use the registered trademark and constitutes unfair competition, and Beijing Auchan Company's sales also constitute infringement.

The first-instance court held that, based on the evidence provided by Guizhou Laoganma Company in this case, the trademark involved in the case should be recognized as a well-known trademark. Guizhou Yonghong Company's use of the trademark involved in the case as the series name of the products involved in the case will mislead consumers into believing that the products involved in the case have some connection with Guizhou Laoganma Company, thereby weakening the distinctiveness of the trademark involved in the case. Guizhou Laoganma Company and Guizhou Yonghong Company do not have a market competitive relationship, and the relevant provisions of the Anti-Unfair Competition Law cannot be applied. Guizhou Yonghong Company's actions involved in the case do not constitute unfair competition. The first-instance court ruled that Guizhou Yonghong Company should immediately stop using the words "Laoganma Flavor" on its beef stick products, and Beijing Auchan Company should stop selling the beef sticks printed with "Laoganma Flavor"; Guizhou Yonghong Company should compensate Guizhou Laoganma Company for economic losses and reasonable expenses totaling 426,500 yuan. Guizhou Yonghong Company appealed.

The second-instance court held that Guizhou Yonghong Company's use of "Laoganma" as the flavor name of the products involved in the case and marking it on the front of the packaging of the products involved in the case constitutes copying and imitation of the trademark involved in the case, which can play a role in identifying the source of the goods and constitutes use in the sense of trademark law. Although the products involved in the case do add "Laoganma" brand fermented black beans, "Laoganma" brand fermented black beans are not commonly used raw materials in the food industry, and "Laoganma Flavor" is not a common way to describe the flavor of goods in the daily food industry. The use of the "Laoganma" wording on the products involved in the case does not fall within the scope of fair use. Guizhou Yonghong Company's use of the "Laoganma" wording on the front of the packaging of the products involved in the case and its use of "Laoganma Flavor" as a flavor name listed alongside "Original Flavor", "Spicy", etc., is sufficient to make the relevant public directly associate the trademark involved in the case when they see the products involved in the case, thereby destroying the close connection and correspondence between the trademark and the fermented black beans, chili sauce (seasoning), and fried chili oil products produced by Guizhou Laoganma Company, weakening the distinctiveness of the trademark as a well-known trademark, and improperly utilizing the market reputation of the well-known trademark, constituting the situation referred to in Article 13, paragraph 3 of the Trademark Law as "misleading the public, causing the interests of the registrant of the well-known trademark to be potentially harmed". Guizhou Yonghong Company's relevant grounds for appeal lack factual and legal basis, and the judgment dismissed the appeal and upheld the original judgment.

(2) Court Comments

If an operator uses another's well-known trademark as the name describing the characteristics of a product in a prominent position on the product packaging, even if the product for which the well-known trademark is designated for use is indeed used as a raw material, but if the product for which the well-known trademark is designated for use has not become a commonly used raw material in the industry, and the well-known trademark has not become a commonly used product characteristic name in the industry, then the operator's use of the well-known trademark in the above manner is not justified; and this use will weaken the ability of the well-known trademark to inform consumers of the specific source of the product, thereby weakening the distinctiveness of the well-known trademark, constituting the situation referred to in Article 13, paragraph 3 of the Trademark Law that harms the legitimate rights and interests of the registrant of the well-known trademark.

In this case, the upper part of the front of the beef stick packaging involved in the case is marked with the "Bull Head Brand and Figure" trademark owned by Guizhou Yonghong Company, and the middle part is printed with the words "Laoganma". In addition to "Laoganma", Guizhou Yonghong Company's beef sticks also have other products such as "Original Flavor", "Spicy", and "Black Pepper". Although Guizhou Yonghong Company uses "Laoganma" as the flavor name of the products involved in the case, the trademark involved in the case is marked on the front of the packaging of the products involved in the case, which constitutes a copy of the trademark involved in the case and can play a role in identifying the source of the goods, constituting a trademark use behavior in the sense of trademark law. Although the products involved in the case do add "Laoganma" brand fermented black beans, "Laoganma" brand fermented black beans are not commonly used raw materials in the food industry, and "Laoganma" is not a common way to describe the flavor of goods in the daily food industry. The use of the "Laoganma" wording on the products involved in the case does not fall within the scope of fair use.

Although the beef stick products involved in the case and fermented black beans, chili sauce (seasoning), and fried chili oil products differ in terms of raw materials, functions, and uses, both belong to daily food products, and there is some overlap in sales channels and consumer groups. Guizhou Yonghong Company's use of the "Laoganma" wording on the front of the packaging of the products involved in the case and its use of "Laoganma" as a flavor name listed alongside "Original Flavor", "Spicy", etc., is sufficient to make the relevant public directly associate Trademark No. 2021191 "Laoganma" when they see the products involved in the case, thereby destroying the close connection and correspondence between the trademark and the fermented black beans, chili sauce (seasoning), and fried chili oil products produced by Guizhou Laoganma Company, weakening the distinctiveness of the trademark as a well-known trademark. Guizhou Yonghong Company, knowing that Trademark No. 2021191 "Laoganma" has high brand awareness in fermented black beans, chili sauce (seasoning), and fried chili oil products, still uses the words "Laoganma" on the products involved in the case, intending to use the market reputation of the trademark to attract the attention of the relevant public and thereby obtain undue economic benefits. Therefore, Guizhou Yonghong Company's act of marking "Laoganma" on the packaging of the products involved in the case weakens the unique correspondence between Trademark No. 2021191 "Laoganma" and Guizhou Laoganma Company, weakens the ability of the well-known trademark to inform consumers of the specific source of the product, thereby weakening the distinctiveness of the well-known trademark, and improperly utilizes the market reputation of the well-known trademark, constituting the situation referred to in Article 13, paragraph 3 of the Trademark Law as "misleading the public, causing the interests of the registrant of the well-known trademark to be potentially harmed", infringing on the trademark rights of Guizhou Laoganma Company, The first-instance court's finding in this regard is correct, and this court supports it.

"Lafite" Trademark Infringement Dispute Case (This case was selected as one of the 50 typical cases of intellectual property judicial protection by the Supreme People's Court in 2017 and one of the top ten cases of intellectual property judicial protection by Shanghai courts in 2017)

Lafite Rothschild Winery v. Shanghai Baochun Industrial Development Co., Ltd. Trademark Infringement Dispute Case, Shanghai Intellectual Property Court (2015) Hu Zhi Min Chu Zi No. 518 Civil Judgment

(1) Basic Case Facts

In 1996, the company, Chateau Lafite Rothschild, applied to the State Trademark Office for registration of the "LAFITE" trademark. The trademark was approved and registered by the State Trademark Office in 1997 for use on goods in Class 33, alcoholic beverages (excluding beer). On October 8, 2009, Chateau Lafite Rothschild changed its company name to its current name. On December 19, 2011, the registered name of the trademark was changed to the plaintiff (i.e., Chateau Lafite Rothschild). After several renewals, the trademark is valid until October 27, 2027. (Currently, the plaintiff has successfully registered the "Lafite" trademark, but since the alleged infringement occurred before it was approved, only protection for an unregistered well-known trademark can be sought.)

The plaintiff argues that "Lafite," as a phonetic translation of the plaintiff's registered trademark "LAFITE," has achieved extremely high recognition and influence in China, specifically referring to the plaintiff and the wines produced by the plaintiff. "Lafite" has formed a stable and unique correspondence with the plaintiff and the wines produced by the plaintiff, and the court should recognize "Lafite" as the plaintiff's unregistered well-known trademark. In May 2015, the plaintiff discovered that the two defendants were importing and selling a large quantity of wines with the markings "Lafite Estate" and "CHATEAUMORONLAFITTE," and promoting, displaying, and selling the infringing goods through their official website www.mellowines.com and the "Baochun Food Flagship Store" on the Tmall website (TMALL.COM). Specific acts of infringement include: 1. The two defendants sold the infringing goods at a location in the Shanghai Waigaoqiao Bonded Zone, Delin Road, XXX, with a sign that says "Baozheng Logistics." The main label on the bottle uses the marking "CHATEAUMORONLAFITTE," which contains the word "LAFITTE," similar to the plaintiff's registered trademark "LAFITE"; the back label uses the words "Lafite Estate Dry Red Wine," in which "Lafite" is similar to the "Lafite" that the plaintiff claims as an unregistered well-known trademark; 2. The two defendants promoted, displayed, and sold the infringing goods on the defendant Baochun Company's official website and the "Baochun Food Flagship Store" on the Tmall website; 3. The packaging of the infringing goods displayed on the defendant Baochun Company's official website used the markings "Lafite" and "CHATEAUMORONLAFITTE," which are similar to the plaintiff's "Lafite" and "LAFITE" trademarks, respectively; 4. The sales documents for the infringing goods used the markings "Lafite" and "CHATEAUMORONLAFITTE," which are similar to the plaintiff's "Lafite" and "LAFITE" trademarks, respectively. In this case, the defendant Baochun Company is the importer and seller of the infringing goods. The plaintiff obtained evidence through notarization by purchasing the infringing goods from the defendant Baozheng Company. Therefore, the two defendants jointly sold the infringing goods, and the defendant Baozheng Company was once the controlling shareholder of the defendant Baochun Company, and intentionally provided logistics, warehousing, display, and sales convenience for the defendant Baochun Company's infringing acts, helping it to commit the infringement. The acts of the two defendants jointly infringed on the plaintiff's legitimate trademark rights to the registered trademark "LAFITE" and the unregistered well-known trademark "Lafite," and should bear joint and several liability for compensation. The plaintiff provided multiple pieces of evidence to support this claim to the court.

The defendants denied that "Lafite" should be a well-known trademark, arguing from the aspects of lack of distinctiveness, inconsistent translation, and non-trademark use, and submitted relevant evidence to the court. It is noteworthy that the defendants pointed out that in addition to the infringing goods "Lafite Estate" (CHATEAUMORONLAFITTE), their imported and sold wines also include "Chateau Lafite Rothschild" (commonly known as Grand Lafite) and "Carruades De Lafite" (commonly known as Petit Lafite). The above-mentioned goods were all legally imported and belong to legitimate international trade; the "CHATEAUMORONLAFITTE" trademark used on the label of the infringing goods is a validly registered trademark in France. This trademark is neither identical nor similar to the plaintiff's registered trademark "LAFITE," and will not cause consumers to confuse the source of the goods, therefore it does not constitute an infringement of the plaintiff's trademark rights.

(2) Court Comments

This case is the first case in Shanghai courts to protect an unregistered well-known trademark. In this case, the "Lafite" trademark was not approved for registration at the time of the infringement, so it is necessary to determine whether it was a well-known trademark at the time of the infringement. In this case, in addition to making a precise determination that the "Lafite" trademark is an unregistered well-known trademark, the court also ordered the defendants to compensate the plaintiff for losses caused by the infringement, making up for the shortcomings in the legal and judicial practice of compensation provisions for unregistered well-known trademarks. Therefore, it has certain reference significance for the protection of unregistered well-known trademarks, and is also conducive to regulating China's imported wine market and guiding the honest business practices of imported wine enterprises.

(1) Summary of Reasoning Regarding Baochun Company's Trademark Infringement

I. Whether the relevant markings used on the main label of the infringing goods' wine bottle infringe on the plaintiff's exclusive right to the "LAFITE" registered trademark. "LAFITE" is a trademark registered by the plaintiff in China. The relevant markings used on the main label of the infringing goods' wine bottle are not registered in China. Even if the markings used on the main label of the wine bottle are trademarks registered by a third party in France, trademark rights have territoriality and independence. This case does not involve judging the use of the relevant French registered trademarks in France. The fact that the relevant trademarks registered by the third party in France and the "LAFITE" trademark registered by the plaintiff in France are both valid trademarks cannot be used as the basis for judging the alleged infringing acts in China. After goods using French registered trademarks enter China, they should still be governed by relevant Chinese laws and cannot infringe on the legitimate rights of Chinese registered trademarks.

Secondly, with regard to the markings used on the main label of the infringing goods' wine bottle, they were not used in accordance with the defendant's claim of the relevant trademarks registered by a third party in France. They were not used in the registered trademark's handwritten style, and the words "CHATEAU," "MORONLAFITTE," "APPELLATIONBORDEAUXSUPERIEURCONTROLEE," etc., were arranged vertically from top to bottom. And "MORONLAFITTE" has the largest font size, and "MORONLAFITTE" is a relatively independent part with the main identification function in the above markings.

Thirdly, the plaintiff's registered trademark "LAFITE" has high recognition and is known to the relevant public in China. "MORONLAFITTE" contains "LAFITTE," differing from the plaintiff's registered trademark "LAFITE" by only one letter "T." The two have high similarity in pronunciation and visual effects. For the relevant public in China who do not use French as their mother tongue, it is easy to misidentify the source of the goods or to think that their source has a specific connection with the goods of the plaintiff's registered trademark. The two constitute similar trademarks. Therefore, the relevant markings used on the main label of the infringing goods' wine bottle infringe on the plaintiff's exclusive right to the "LAFITE" registered trademark in China.

II. Whether the "Lafite" marking used on the back label of the infringing goods' wine bottle infringes on the plaintiff's trademark rights to the unregistered well-known trademark "Lafite". As a professional importer and distributor of imported wines, the defendant, Baochun Company, imports and distributes the plaintiff's "CARRUADES de LAFITE" (Lafite Rothschild red wine) and "CHATEAU LAFITE ROTHSCHILD" (Lafite Rothschild second label red wine). It should have known about the plaintiff's "LAFITE" trademark and its corresponding Chinese name "拉菲", but it did not provide a complete translation of the logo used on the bottle label. It also failed to make reasonable accommodations during translation, translating the allegedly infringing product as "拉菲特庄园干红葡萄酒". This shows clear subjective malice, as "拉菲特" is similar to the plaintiff's unregistered well-known trademark "拉菲". Therefore, the use of the "拉菲特" logo on the back label of the allegedly infringing product infringes on the plaintiff's trademark rights in the unregistered well-known trademark "拉菲".

Summary of Reasoning Regarding the Determination of the Amount of Compensation for Trademark Infringement

First, according to Article 36, Paragraph 2 of the Trademark Law, regarding trademarks that have been approved for registration after examination and opposition have been deemed unfounded, it is stipulated that, on the one hand, the trademark does not have retroactive effect on the acts of others using identical or similar marks on the same or similar goods from the date of the initial announcement of the preliminary examination and approval to the date of the decision to grant registration. However, on the other hand, based on the above-mentioned provision on the lack of retroactive effect, it is stipulated that compensation should be given for losses caused to the trademark registrant by the user's malicious intent. This legal provision provides a remedy for losses caused to the trademark registrant by the user's malicious intent during the period of uncertainty as to whether the trademark will ultimately be granted registration. The infringing act in this case occurred before the plaintiff obtained the exclusive right to use the "拉菲" trademark. Although the Trademark Law and its related judicial interpretations do not stipulate that compensation can be obtained for infringement of unregistered well-known trademarks in China, the defendant Baochun Company's use of the "拉菲特" mark clearly demonstrates subjective malice. Combining the legislative intent of Article 36, Paragraph 2 of the Trademark Law and the actual situation that infringement of an unregistered well-known trademark does cause losses to the right holder, the two defendants in this case should compensate the plaintiff according to the relevant provisions of the Trademark Law from the time their infringing acts occurred.

From China Trademark Magazine