In July 2022, the Supreme People’s Court of the People’s Republic of China (“SPC") rendered a retrial judgment of the administrative lawsuit filed by a subsidiary of Treasury Wine Estate (“TWE") against a Jinjiang-based import and export company (“Jinjiang Company") for invalidation of the registration 11157214 of “奔富酒园" (“BENFU Winery"). Upon fully considering the bad faith of the Jinjiang Company, the SPC held that BENFU Winery was registered by illicit means and should be invalidated, and therefore revoked the second instance judgment rendered in favor of Jinjiang Company by the Beijing High People’s Court. After  six years, TWE’s longstanding battle against the Jinjiang Company, the centerpiece of a series of cases surrounding BENFU Winery, finally came to a satisfying conclusion.

Zhong Lun represented TWE and provided full legal services for the invalidation action and all related cases. The Zhong Lun team was led by partners Jimmy Huang and Hope Yang, and team members included counsel Ruby Jia and associates Alicia Ma, Shishi Luo, and Jingtian Yan.

Headquartered in Australia, TWE is one of the world’s largest wine groups, boasting dozens of world-renowned wine brands, including PENFOLDS, GRANGE, etc. PENFOLDS wine is regarded as “the symbol of Australian wine" and “the aristocracy of the Australian wine industry". Since it entered the Chinese market in the 1990s, TWE has been using “奔富" as its Chinese brand.

With growing popularity of TWE’s PENFOLDS brand, more and more entities seek to free-ride on the good fame of PENFOLDS to gain illicit interests. This was the case with the Jinjiang Company, who applied for the trademark BENFU Winery in 2012, and has since applied for more than 40 trademarks containing “奔富" as well as a large number of other trademarks similar to other renowned luxury brands, such as “宾利". Moreover, during the promotion of their BENFU Winery wines, the Jinjiang Company and its affiliated entities widely imitated and used  TWE’s PENFOLDS trademarks, promotional slogans and photos. To protect its legitimate rights and interests, TWE has taken various actions at home and abroad against the Jinjiang Company, including dozens of civil and administrative lawsuits, and this BENFU Winery case is the most critical one among them.

The case has complicated backgrounds. After meticulously sorting out the context of the case, Zhong Lun lawyers formulated a comprehensive litigation strategy, collected solid evidence, fully displayed and illustrated evidence, made watertight arguments, and finally got support from the SPC. The SPC concluded that the Jinjiang Company intentionally registered the trademark BENFU Winery to take advantage of the PENFOLDS wine producer’s popularity, and its application for more than 250 trademarks, including “宾利", could hardly be explained away as out of the needs for normal business operations. The BENFU Winery trademark was registered by illicit means, which could not be justified even though the Jinjiang Company provided evidence showing its use of the trademark. The SPC also clarified that “the registration was acquired by fraud or any other illicit means" pivoted on whether the means for instead of the purpose of trademark registration was illicit.

This case is a milestone achievement for TWE’s global brand protection strategy, which demonstrates TWE’s zero tolerance for infringement of its world-renowned brands. Moreover, the SPC’s judgment is of great significance in rectifying the market order concerning the PENFOLDS brand and also highlights the resolve of the Chinese courts to increase the protection of intellectual property rights and combat registration of trademarks through illicit means.