It was found that Beijing Baicui had successfully registered a trademark containing the Ptrus transliteration `’ by adding three characters (`’) and Latin words to form `BAICUIMOEL’. However, Beijing Baicui used only `’ (`Bai Cui’) as its trade name and in its promotion materials.

Moreover, to further mislead consumers, Beijing Baicui appropriated Ptrus’ brand story and accolades as its own in its promotions. For example, it falsely claimed that the allegedly infringing product was the “King of Wines”, the “Top of the Bordeaux Big 8”, the “Wedding Wine of Queen Elizabeth II” and the “Wine Presented to the White House by the Kennedy Family”.

In 2022 Ptrus sued Beijing Baicui and its distributor before the Chaoyang District Court of Beijing on the ground of unfair competition, namely, infringement of the trade dress of its bottle label and false advertising. It also claimed trademark infringement due to the use of the transliteration of its registered trademark.

First and second-instance decisions

The first-instance court confirmed that all the above grounds could be established.

Trade dress infringement

While the sales volume of Ptrus wine may not be very large in China due to its rarity, considering its high reputation in the wine industry and the number of articles published about it in various media, the court found that the trade dress of the Ptrus wine had gained a “certain level of recognition” in China, as provided by the law, and should thus be protected. The court further found that the trade dress of Beijing Baicui’s wine was very similar to that of Ptrus in terms of layout, colour scheme, font and key device elements and that, therefore, Beijing Bai Cui had committed acts of unfair competition.

Trademark infringement

The court found that, although Ptrus had no trademark registration for the Chinese transliteration `’ in China, given the

high reputation of the English-language mark PTRUS in China and the general perception among Chinese consumers that ` ‘ is the Chinese counterpart of Ptrus, the scope of protection of the English-language trademark could be extended to the Chinese mark. Therefore, trademark infringement was also established.

False advertising

The court was satisfied that Beijing Baicui’s bad faith in appropriating Ptrus’ brand story for its own use was obvious and that such behaviour constituted an act of unfair competition.

Outcome

The Chaoyang District Court ordered the cessation of the above acts and awarded Ptrus damages. The defendants later appealed before the Beijing Intellectual Property Court, which upheld the first-instance decision.

Comment

This case demonstrates that, in instances of obvious malicious infringement, the Chinese courts are willing to assess infringement in a more flexible manner. In this instance, the court decided that the foreign registered name was protected against the use of its transliteration, even though such transliteration was not registered as a trademark in China. Therefore, when dealing with a full-scale imitation of trademarks, trade dress or brand stories, rights holders should underline the bad faith of the imitator and leverage it to seek more effective protection. This once again reinforces a key principle in trademark law: the more extensive and consistent the use of a trademark, the stronger the protection it may receive.