Beijing High Court has overturned a decision by Beijing IP court to invalidate Rush Rich’s trademark claim of Ben Fu Winery (奔富酒园), dealing a blow to Penfolds’ efforts to protect its trademark in China.
The court decision would embolden Rush Rich, which operates in both Australia and China, to continue to “exercise is legal rights of using 奔富酒园 trademark”, the Chinese company said after the court ruling.
It came as a shock as Treasury Wine Estates, the parent company of Penfolds, has won court cases in both Australia and China last year against Rush Rich for engaging in unfair competition by selling lookalike Penfolds wines, after TWE launched legal actions in China and Australia, where Rush Rich wines are produced.
When reached by Vino-joy.com, Treasury Wine Estates said the company would pursue a retrial upon hearing the court decision.
“TWE remains strong in its position as the legal owner of the Chinese character mark for Penfolds – 奔富 (Ben Fu) and intends to pursue a retrial to invalidate Rush Rich group’s registration for the 奔富酒园 mark, which translates to ‘Penfolds Winery’ and was previously invalidated on the grounds of bad faith by both the TRAB and Beijing IP Court”, the Australian wine giant told Vino-joy.com.
In China, Treasury Wine Estates owns the legal rights to use Ben Fu (奔富), which means ‘chasing prosperity’ In English, after a lengthy court battle with a trademark squatter called Li Shen who registered the trademark in 2009.
Penfolds has been using Ben Fu branding in China, a transliterate name for its English name Penfolds, before Rush Rich was established in 2016.
However, despite the loss, TWE affirmed its position and cited previous wins in Australia and Shanghai that established “RushRich had infringed TWE’s Penfolds trademarks, and decision of the Chinese court decision which ascertained that RushRich group had sought to mislead consumers, and breached unfair competition laws.”
Timeline of Penfolds V.S. Rush Rich
In February last year, TWE filed a lawsuit in Melbourne federal court against Rush Rich for selling lookalike Penfolds wines.
Shortly Rush Rich filed a cross claim against TWE in Australia.
However, a year later, the federal court in Australia ordered Australian company Rush Rich Winery to immediately cease production of wine with any mark “substantially identical with or deceptively similar to” Penfold’s Chinese branding and a fine of nearly AU$400,000 to TWE.
Around the same time, Shanghai court also ruled against Rush Rich for unfair competition and false advertising, and ordered it to pay TWE RMB 1.4 million (US$198,000) in compensation.
The decision was upheld by Beijing IP court in August last year, rejecting Rush Rich’s appeal regarding the invalidation of ‘Ben Fu Winery’ trademark in China.
In Australia, the Australian Trade Marks Office (IP Australia) also rejected Rush Rich’s related Australian trademark application for the Chinese character mark – Rush Rich 奔富 on the grounds of bad faith. In reaching this decision, IP Australia noted that Rush Rich was clearly “attempting to usurp for itself the ‘Penfolds brand’s reputation’ as Ben Fu is recognised by consumers as referring to Penfolds wines. The office also noted that Rush Rich’s “conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons”.
IP Australia has also rejected numerous other applications by the Rush Rich group in Australia on the grounds of bad faith.
Who’s behind Rush Rich?
Founded in 2016, Rush Rich is owned by Eastern Tomorrow (Jinjiang) Import & Export Co, and the brain behind the company is Pan Ruxian, a legendary and controversial character in China’s wine trade. He was most famous for his involvement with French wine group Castel’s trademark case in China.
Pan worked in the French wine group before joining rival company 卡斯特 founded by Li Daozhi, according to his own account. Li registered the trademark for Castel’s Chinese name and went on to win the trademark lawsuit against Castel in 2015. This forced the French wine group to rebrand its name, and pay Li nearly US$5 million in compensation.
Coincidentally, in addition to Castel, Li previously held the trademark registration of Ben Fu奔富 and in 2009, he transferred the rights to Li Shen in 2009, according to Chinese media reports, the key individual that locked in legal battle with TWE until the Australian wine giant won the trademark to Ben Fu in 2017.
The Australian Government’s wine industry regulator, Wine Australia, has confirmed that they recently revoked Australia R&R Winery Pty Limited’s export approval of RushRich wine, which bear the Ben Fu Winery mark.
According to TWE, Australian R&R Winery Pty Limited is an Australian entity within the RushRich group.