The Australian wine label Penfolds, owned by Treasury Wine Estates, has been available on the Chinese market since 1893. As Chinese consumers speak Chinese, and Penfolds in English does not lend itself well to be spoken in Chinese, the wine label is known in China under the name 奔富 (Ben Fu).
As premium Australian wine, with its own look and feel to its bottles, Penfolds had a Chinese competitor, Rush Rich, that sourced wine from Australia and bottled it in Ben Fu wine bottles. The feel of these bottles would look and feel like Penfolds bottles. This company unfortunately had registered the trademark 奔富酒园 Ben Fu Jiu Yuan (Ben Fu winery) in China.
Apart from legal actions in Australia, which Penfolds won, Penfolds naturally tried to invalidate the trademark 奔富酒园 Ben Fu Jiu Yuan (Ben Fu winery) in China. They succeeded at the Beijing Court. However, the Beijing Higher IP court overturned this decision in appeal. As such, Penfolds had to go to the China Supreme People's Court in order to finally invalidate the trademark.
How did Penfolds win at the China Supreme Court?
Penfolds successfully proved to the court that it is known in China under the Chinese name 奔富 (Ben Fu). Furthermore, it showed that Rush Rich had registered other known foreign brand trademarks, including that of Bentley.
After a six-year legal battle between Penfolds and Rush Rich, the Supreme Court of China ruled in favor of Penfolds, and decided that Rush Rich had acted in bad faith. As such, the trademark registration of Rush Rich , 奔富酒园 Ben Fu Jiu Yuan (Ben Fu winery) in China, will be invalidated.
Crucial to have a Chinese name
If a company does not have a Chinese name, the Chinese market will in practice create a name for it. Unfortunately, there are many Chinese companies taking advantage of knowledge of the market, who then register these names in bad faith. It is hard to get rid of these registrations.
In the case of Penfolds, luckily the brand had a long reputation in China, and the bad faith company also had registered other famous brands in bad faith. However, it is better to be in a pro-active situation, rather than a reactive one, by registering your Chinese name as soon as possible.
Ways to create a Chinese name
There are four ways to create a Chinese name for your company, product or service:
- Translate the meaning: for example, Apple is Pingguo in China. Literally, Apple.
- Translate the sound: Siemens is XiMenZi in Chinese. Sounds like Siemens.
- Translate meaning and make it sound alike: Coca-Cola, KeKou KeLe, meaning delicious happiness.
- Create a completely new name. Reinout van Malenstein, 王锐宁 (Wang Rui Ning) in Chinese.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
