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 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 different.
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.
Client Alert 2014-156