French Trademarks Composed Of Chinese Characters: Imitation Successfully Upheld With A Broad Definition Of 'Relevant French Public'

Author:Ms Marina Cousté and Charlotte Portmann
Profession:Reed Smith

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 France. 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...

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