Chinese name for Penfolds held for ransom by trademark squatters, winemaker says

Chinese name for Penfolds held for ransom by trademark squatters, Australian company says

PUBLISHED : Monday, 14 July, 2014, 10:38pm
UPDATED : Tuesday, 15 July, 2014, 8:35am

Australian winemaker Treasury Wine Estates, owner of the popular Penfolds brand, is facing a legal challenge in China over the right to use its Chinese name, in the latest of a series of high-profile trademark disputes there.

A company spokesman said it was fighting an appeal against a Chinese court ruling that recognised its right to use its adopted Chinese name Ben Fu, or "chasing prosperity". Someone else has trademarked the name.

"This appeal is still pending and it will take time for the Chinese legal system to process this matter," Roger Sharp, Treasury's director of corporate affairs, wrote in an e-mail.

Sharp confirmed a report in the Australian Financial Review yesterday regarding legal procedures in China between Penfolds and Li Daozhi, whom the newspaper described as a "notorious trademark squatter".

Li, the founder of wine distributor Panati Wine, based in Wenzhou, Zhejiang , gained prominence for taking on French winemaker Castel Freres in a similar case.

Also known as Daniel Li, he is a Spanish citizen of Chinese origin, legal records show. Another person holding Penfolds trademark rights is Li Shen, who also lives in Spain.

The two men hold different rights to the Australian winemaker's chosen Chinese name for much of the coming decade, according to China Trademark Office filings.

Treasure Wine Estate registered its rights only for the English version of the Penfolds brand name, the Chinese records show. In its lawsuit, Treasury is trying to prove it is the rightful owner of the Chinese version of the name.

The two Lis are not the only ones holding rights to the trademark in China. The two Chinese characters Ben Fu appear in more than 70 registered trademarks, records show. At least four companies use the Australian winery's exact logo to sell marketing services, beverages, and bedding.

Li Daozhi won a similar case against Castel Freres, a French winemaker, forcing the company to change the Chinese name of Cavesmaitre, one of its brands, from "Kasite" to "Kasidaile".

Li Daozhi's company registered "Kasite" in 2000, a year after Castel had started selling wine in China. Li then reportedly offered the name to Castel for €1 million (HK$7 million) in 2003, but Castel turned down the offer. In 2005, Castel unsuccessfully sued Li's company. Li then sued Castel for damages, a case that is still working its way through the system.