On April 29, 2014, the Versailles Appeal Court issued an
interesting decision as regards assessment of likelihood of
confusion between two French trademarks composed of Chinese
characters and designating wine, the prior trademark being owned by
the famous Domaines Barons de Rothschild (Lafite).
Given the nature of the signs, it was important to first
determine the "relevant public" before assessing the
similarities. Indeed, depending on the definition of the the
targeted consumer the assessment takes into consideration all the
visual, conceptual and phonetical components or only the sole
visual components of both signs.
With the first two Chinese characters of the trademarks presumed
to be identical, the applicant was therefore strongly claiming that
likelihood of confusion should be assessed from the perspective of
a Chinese consumer living in France (the Chinese community in
France is one of the most important ones in Europe composed of
about 600.000 people) and understanding Chinese language. It was
claimed that this was the only consumer targeted to buy wines sold
under a trademark composed of Chinese characters, rather than the
average French consumer who is unlikely to perceive the Chinese
meaning of the signs.
To support its claim, the applicant has given affidavits of
Chinese translators asserting that both signs were phonetically and
conceptually different, and referred to the description included in
the trademark application forms indicating that the prior trademark
was the transliteration of LAFITE DISTRIBUTION whereas the post
application was the transliteration of LAFINESS. However, these
circumstances were challenged by the owner of the prior trademark
as irrelevant for the following reasons:
The two identical Chinese characters correspond to the ones
which are well known in China as designating LAFITE. Therefore, the
Chinese consumers, all the more those living in France, will
immediately perceive the link with the LAFITE wines marketed in
The description featured in the trademark application will be
ignored by the consumer.
To convince the Court, the applicant has also produced numerous
decisions which took into consideration specific targeted consumers
to waive the likelihood of confusion between signs composed of
foreign characters. For instance, the Paris First Instance Court,
in a decision dated September 13 2012, considered that there was no
imitation between the signs KOL-TOV and OF TOV within the mind of
the consumers of kosher products, likely to perceive different
meanings of each sign in Hebrew. However, this was strongly
criticised by the prior trademark's owner as irrelevant since
the solution was justified in this specific case by the strict
definition of the relevant public due to the specific nature of the
goods: kosher food products. Moreover, apart from the conceptual
difference, both signs were also phonetically and visually
The Court, following the arguments raised by the owner of the
prior trademark and the French Trademark Office, considered that
the assessment shall not be restricted to one part of the targeted
consumers, namely Chinese consumer or of Chinese origin, and given
the nature of the products (staple goods), they were intended for
an average consumer who was well informed and reasonably observant,
and not familiar with the Chinese language. Since the Court has
retained a broad definition of the relevant public - the French
consumer unlikely to perceive the meaning of the signs - only a
visual comparison between both signs was relevant. This visual
comparison led the Court to uphold imitation.
This case is important for the protection of the prior trademark
composed of Chinese characters, both in France and in China. Even
with a different assessment (visual comparison/global comparison
based on visual, aural and phonetical similarities), imitation has
been successfully upheld in both countries, with other trademarks
composed of the same two Chinese characters.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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