A Chinese court has overturned a decision to invalidate the trademark of a Penfolds copycat wine produced by Rush Rich.
Treasury Wine Estates has been involved in an extended legal battle with Rush Rich over the trademark.
The Beijing High Court has overturned an earlier decision by a Beijing intellectual product court regarding the Ben Fu label.
Ben Fu translates in Chinese to “chasing prosperity” and had been used by TWE on its wines in China. It claimed in earlier court cases that Rush Rich had copied it.
TWE also launched legal action in the Australian Federal court in 2018, with Rush Rich subsequently filing a cross claim against TWE.
Owner Vincent Zhao said at the time that he would strongly contest suggestions of trademark infringement. He told the Adelaide Advertiser he was “shocked and disappointed’’ by the claims.
“There is no similarity in design between our wine labels and that of Penfolds,” he added. “Our product range does not in any way resemble the Penfolds’ range.’’
The Federal Court upheld TWE's claim regarding the Penfolds copycat and the company was awarded $375,302 in compensation from Rush Rich.
The Australian decision followed the Shanghai Pudong Court upholding TWE’s unfair competition claim against Rush Rich’s Chinese group entities (Rush Rich International Trading Inc., Ltd. and East Bright Sunshine (Jinjiang) Import & Export Co, Ltd, both also respondents in the Federal Court of Australia proceeding).
The court found the following in favour of TWE:
• The good fame and reputation of TWE’s Penfolds wines and the corresponding relationship of Penfolds and Ben Fu are recognised and upheld.
• Rush Rich’s various claims in relation to the Australian wine industry, for example, that they are “the largest and most famous winery in Australia”, “the symbol of Australian wine”, etc, are false and misleading and constitute unfair competition.
• Rush Rich has acted in bad faith to mislead consumers in to believing that they had a relationship with the Penfolds brand.
In addition, the Chinese Court ordered that the relevant Rush Rich entities:
• Immediately stop any activities that constitute unfair competition.
• Make a public statement in the mainstream magazine, China Wine, as well as on its official WeChat account, noting the outcome of the decision and apologizing to TWE.
• Pay 2,000,000 RMB (approximately $426,000) in compensation to TWE (including damages and costs.
A spokeswoman for TWE told The Australian the company would pursue an appeal of the Beijing High Court decision regarding the invalidation of Rush Rich group’s registration for the mark, which translates to “Penfolds Winery”, and which was previously invalidated on the grounds of bad faith by other courts.
“In support of this position, Treasury Wine notes that it is the owner of the earliest trade mark filings for the Ben Fu mark in relation to wine in both China and Australia, dating back to February 9, 2011, and April 1, 2016, respectively,” the company said.
“Treasury Wine also points to prior decisions of the Australian and Chinese authorities against the Rush Rich group, which established that Rush Rich had infringed Treasury Wine’s rights to the Penfolds/Ben Fu trade marks, had sought to mislead consumers, and breached unfair competition laws.” it added.
Treasury Wine said it was confident it would continue to succeed in its legal actions in Chinese courts against Penfolds copycat Rush Rich and “will continue to invest every effort to protect its brands against copycat infringers”.
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