TWE sued by winery over copycat claims

Adelaide's Rush Rich Winery has filed a cross claim against Treasury Wine Estates after being described as a ‘copycat’ operator supplying ‘fake’ wine to China’’.

Owner Vincent Zhao said he will 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.’’

TWE filed legal proceedings against Rush Rich in the Federal Court of Australia in February.

CEO Michael Clarke vowed to stamp out trade mark infringements that exploit TWE’s iconic Penfolds brand, including the unauthorised use of TWE’s Ben Fu trade mark (the Chinese transliteration for Penfolds).

Penfolds started using the Ben Fu branding in China before Rush Rich was established in April 2016, Rush Rich says it holds the right to use these characters in China.

“Treasury Wine Estate’s trademark infringement claims, contrary to the picture that has been painted in the media, revolve around the use of the Chinese characters on the Chinese small label on the back of our wine bottles, which is a direct translation of our company name ‘Rush Rich Winery’," Zhao added.

“These Chinese characters have been trademarked in China and we have been authorised by the holder of the trade mark in China to use it on products exported to China.

“We reject, in the strongest terms, Treasury Wine Estate’s assertion that we have infringed any trademark held by Treasury Wine Estates and will contest this vigorously in the Federal Court.

“We have also filed a cross claim in the Federal Court against Treasury for misleading or deceptive conduct arising from statements made by Treasury . . . which incorrectly asserted that certain adverse findings of the Australian and Chinese Trade Marks Offices were made against our company and are seeking orders for declaratory relief and damages."

TWE responded yesterday with a statement saying: “Treasury Wine Estates remains strong in its position that it is the rightful legal and beneficial owner of the Penfolds Chinese character mark, and the related BEN FU word mark in both China and Australia.

“TWE is also confident that it will succeed in its claims of infringement against Rush Rich group’s unauthorised use of these trade marks in relation to wine, and that it will be successful in defending the recent counter-claim made by Rush Rich. TWE looks forward to the matter being determined by the Federal Court of Australia.’’

Wine Australia given increased power to stop copycats

TWE expressed support last month for the new Wine Australia Regulations 2018, which increase Wine Australia’s power to stop copycat exports.

Angus McPherson, Managing Director of TWE Australia and New Zealand, said: “Wine Australia is now in a strong position to identify and prevent the export of copycat Australian wines. Any such product can now be stopped by Wine Australia because it puts the reputation of Australian wine at risk, and may breach Australian law and the laws of other countries.

“Without these strengthened regulations and focus from Wine Australia, the reputation of ‘Brand Australia’ has been at significant risk. Exports of copycat products from Australia have been jeopardising our industry’s continued growth."

Wine Australia Chief Executive Officer Andreas Clark said that the new regulations included a number of changes, the most important being the capacity to assess whether an exporter was ‘fit and proper person’.

"Australia’s wine exports continue to climb and our reputation for delivering on quality is a very important part of that growth," Clark noted.

"These new regulations will extend Wine Australia’s power to do more to protect Australian wine’s reputation overseas by ensuring the bona fides of potential and existing exporters.

"Unfortunately, it’s a fact of life that copycats and counterfeiters can move in when they can leverage somebody else’s good reputation to make a buck – left unchecked the damage accrues not just to an individual brand but to the reputation of the nation targeted and its other brands."

Wine cannot be exported from Australia without approval from Wine Australia and Clark said that the new regulations gave Wine Australia the authority to deny the approval of shipments where a product could not be lawfully sold in the country to which it would be exported.

This could include preventing the export of a wine from Australia that infringed intellectual property-related laws in the destination country.

Additionally, exporters will no longer be able to export on behalf of companies or individuals that are not themselves eligible to hold an export licence (such as where a licence has been cancelled).

TWE said in a statement that it will continue to work with industry bodies, government agencies - including Wine

Australia - and commercial partners to protect the long-term reputation and success of Australian wine.

McPherson added: “TWE also applauds IP Australia’s recent decision to refuse trade mark applications made by the copycat operator, Rush Rich, on the grounds of bad faith, as it was clearly attempting to appropriate Penfolds brand reputation. This is another example of how Australian authorities are willing and able to stand tall to protect Australian brands, and we are pleased to see such a stance being adopted across the board.”