Treasury Wine Estates has fended off copycats to secure rights in the local version of its PENFOLDS brand after trading in China for 25 years.
Since 1995, Treasury Wine Estates has labelled its wine for the Chinese market with 奔富, pronounced ‘Bēn Fù’, a phonetic approximation of the word PENFOLDS. The trade mark was registered in China by its local agent, but the registration later expired and was snapped up by an enterprising pirate in 2009.
Unfortunately, this is an all-too-common story with pirates in China frequently registering trade marks that have been popularised in other countries, aided by the Chinese registration system which gives preferential rights to the applicant who is ‘first to file’ rather than those who are first to actually put the trade mark to use. The Chinese government has recently taken steps to clamp down on such activities and revoke registrations for trade marks filed in bad faith.
After almost a decade of legal action, Treasury Wine Estates was able to have the nefarious registration expunged and overcome opposition to its own application to re-register the trade mark. It follows separate victories last year in which Treasury Wine Estates was awarded over $800,000 in compensation from an Adelaide winery for infringing the same trade mark registered in Australia1 and for engaging in unfair competition in China.2 The affair underlines the lengths brand-owners must sometimes go to in protecting their rights. However, it also highlights the value that will be attached to branding in a major market.
HWL Ebsworth routinely advises clients on strategies to secure and enforce trade mark rights, with key contacts in China with expertise in tackling trade mark pirates. Ask a member of our team how we can help make sure you’re covered before it’s too late.
This article was written by Nicholas Pullen, Partner, and Scott La Rocca, Senior Associate.
1 Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd  FCA 720.
2 ABC News, ‘Penfolds ‘copycat’ ordered to pay more than $800k for trademark infringement in China’ (6 May 2019), accessible at https://www.abc.net.au/news/2019-05-06/penfolds-copycat-ordered-to-pay-more-than-800k-in-compensation/11084774.