Treasury Wine Estates (TWE) recently announced that it has succeeded in recovering its right to ownership of the trade mark ‘Ben Fu’ in China.

‘Ben Fu’ is the accepted Chinese articulation of TWE’s iconic Penfolds wine brand, having been coined in the 1990’s.

Whilst TWE’s exclusive right in China to the English word Penfolds was established a number of years ago, it continues to confront many Chinese individuals and companies who seek to trade off its reputation by creating unauthorised permutations of Penfolds, the stylised script form of Penfolds, Ben Fu, Chinese character versions of those brands, and of other brands in its highly respected portfolio.

A complicating factor is China’s first to file system with respect to trade marks. Unlike common law countries such as Australia, which recognise prior ownership rights through even modest use, it is generally very difficult to establish a prior use (and hence an ownership) right in China without substantial evidence of fame of the trade mark at issue.

In the case of ‘Ben Fu’, a Chinese individual filed and secured registration for the Chinese character version of ‘Ben Fu’ for wines without TWE’s authority.

Policing marketplace conduct and the Chinese trade marks Register is an unfortunate, expensive, but necessary step for companies doing business in China in order to maintain brand equity and to minimise the erosion of customer confidence in genuine brands.

Wrays is pleased to have assisted TWE in achieving this outcome, and we look forward to continuing the fight to preserve the integrity of its brands.