Penfolds wine brand owner facing battle with Castel trademark “squatter”
Australian winemaker Treasury Wine Estates (TWE) is facing a battle in China, where one of its trademarks is being used by a resident who was involved in another high-profile case.
The winemaker, the owner of several brands including Penfolds, has claimed it is the rightful owner of the ‘Ben Fu’ trademark, Penfolds’ adopted name in Chinese.
However, three versions of the name have already been registered by businessman Li Daozhi and another man named Li Shen.
According to the Australian Financial Review (AFR), Li Shen has rights to use two versions of the Ben Fu name in the spirits and wine category until 2019 and 2014, while Li Daozhi is said to have the rights to the name for hotels and restaurants until 2021.
TWE said a court had previously ruled it was the lawful owner of the Ben Fu trademark but that Li Daozhi and Li Shen had since appealed against that ruling.
“This appeal is still pending and it will take time for the Chinese legal system to process this matter,” TWE told AFR.
It is not the first time Li Daozhi, who has previously been accused of trademark squatting, has been involved in a dispute involving wine companies.
In 2013, WIPR reported that French wine producer Castel was ordered to pay a hefty $5 million following a lengthy trademark battle.
Castel, which was established in 1949, began using the words Ka Si Te, a Chinese transliteration of Castel, for its marketing in China.
However, it failed to register it as a trademark, allowing Li Daozhi, who had spotted its popularity, to register the mark himself.
The case is due to be heard again after China’s Supreme People’s Court accepted Castel's calls for a retrial.
TWE, based in Victoria, Australia had not previously revealed the lawsuit. It did not respond immediately to a request to comment.
Electric car producer Tesla has suffered similar trademark registration problems in China.
In that case, Chinese resident Zhan Baosheng claimed he is the owner of the Tesla trademark in China, in both Chinese and English, and has accused the car manufacturer of infringement.
