On December 27, 2017, Shanghai IP Court issued a judgement over the dispute between Chateau Lafite Rothschild (“Lafite”) vs. Shanghai Baochun Industrial Development Co. Ltd.(“Baochun”) and Shanghai Safe Logistics Supply Chains Management P.L.C. (“Safe Logistics”) for trademark infringement. Based on the recognition of 拉菲 (LAFITE in Chinese) as a unregistered well-known mark, the court affirmed the similarity between the plaintiff’s marks and the accused infringing marks, namely 拉菲 vs 拉菲特 and LAFITE vs MORON LAFITE, and the constitution of trademark infringement. In consideration of the reputation and distinctiveness of the plaintiff’s trademarks, the malicious intention of the defendants, the sales scale of the infringing products, as well as the huge difference between the import price and retail price of the infringing products, the court ordered the two defendants pay a joint damage of RMB 2 million yuan to compensate the plaintiff’s losses and publish a statement to eliminate the impact.

This case involves three challenging issues:

1) The plaintiff’s 拉菲 mark was not registered when the accused infringement occurred, but was then approved for registration during the trial. Is it still necessary to determine whether it’s an unregistered well-known trademark under such case?

2) When the accused infringement occurred, there was another registered mark “拉菲莊園” which however became invalid during the trial of this case. Was the accused mark 拉菲特莊園 infringing on the then registered trademark拉菲莊園or the then unregistered well-known trademark拉菲?

3) The accused infringing products were indeed imported from a French winery “CHATEAU MORON LAFITTE”, which is a registered mark in France. How to balance the territorial principle of trademark registration and the requirement for imported wines displaying genuine information.

With regard to the necessity of recognizing the unregistered well-known trademark, the court held that, although the plaintiff's 拉菲 was preliminarily published on January 27, 2014, the opposition thereto was not dismissed until February 2017. According to Article 36 of Trademark Law, the plaintiff cannot enjoy any retroactive rights against the use of marks that are identical with or similar to its mark by others. In addition, the accused infringement acts occurred before the plaintiff acquiring the exclusive right of the 拉菲 mark. For both reasons, the court considers it necessary to determine whether the plaintiff’s拉菲 mark was entitled an unregistered well-known mark at the time when the accused infringement act took place.

With regard to the impact of the other registered trademark 拉菲莊園 on this case, because it had been declared as invalid by the time when this judgement was made, it should be deemed as never valid from the beginning. In other words, there is no need to discuss the “rights” or “scopes of rights” of a trademark that never exists.

As to the co-existence of two parties’ marks and trade names in other country, the court explicitly states the territorial principle of trademark registration and emphasizes that the determination of trademark infringement shall be made independently in accordance with the Trademark Law of China, even though the two parties’ marks have co-existed in France. Besides, the French registered mark cited by the defendants is “CHATEAU MORON LAFITTE APPELATION BORDEAUX SUPERIEUR CONTROLEE” in handwriting style, whereas the trademark actually used on the alleged infringing products highlighted the “MORON LAFITTE” part and has a higher level of similarity to the plaintiff’s LAFITE” mark.