Penfolds wine cork
Published: 
31 July 2017

In China, the Chinese language version of your brand can be just as important as the English language version, as winemaker Penfolds® discovered.

Penfolds® was locked in a protracted legal dispute with a businessman who registered the company’s Chinese name before it did.

Treasury Wine Estates, which makes Penfolds®, registered the English language name ‘Penfolds’ in China. Yet they failed to seek protection for the Chinese language version of its name ‘Ben Fu’.

Businessman Daniel Li, who also owns several other trade marks, registered 3 versions of the Chinese language name.

Business disruption

In China, the Latin alphabet is not widely used so Chinese language versions of a brand are often very important.

As a result of the dispute over the ownership of the Chinese name, Penfolds® wines were removed from all InterContinental Hotels in China. There were concerns that the hotels and restaurants selling the wine could be liable for damages.

In 2011, Treasury Wine Estates took legal action against Li’s company and won. Li appealed the result which generated further negotiations. In January 2017 the Beijing High People’s Court found that Li failed to make genuine use of the trade mark. They ruled that the trade mark be cancelled. 'This decision demonstrates China's commitment to a strong IP system and fair judiciary,' says David Bennett, IP Australia's former counsellor to China.

It is extremely important to seek trade mark protection in China before you start doing business there. But as Penfolds' experience proved, securing the Chinese version of your brand is just as important.

Protect both English and Chinese trade marks

You should try to secure your brand in both Chinese characters and in a transliterated form.

After a trade mark has been translated into a Chinese name, the sound of the Chinese name is then written using the Roman alphabet. For example, the corresponding Chinese trademark of Cadillac is 凯迪拉克 whose Chinese transliteration is KAI DI LA KE. Boeing is 波音 (BO YIN), Sony is 索尼 (SUO NI), and Siemens is 西门子 (XI MEN ZI).

It is important to consider a Chinese name or transliteration for your brand at an early stage and to consult with a branding consultant or lawyer.

If you fail to select a Chinese version of your brand soon enough, your distributors, manufacturers and even the customers themselves will select a Chinese name. As with Penfolds®, someone could register this name to block your marketing and business in China.

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