Big trouble for exporter of counterfeit Penfolds

Southcorp Brands Pty Ltd (Southcorp) owns the iconic Australian wine brand “Penfolds”.

“Penfolds” is exported globally, with a significant proportion of sales made to Cantonese and Mandarin speaking consumers.1

In Mandarin and Cantonese, the “phonetic approximation of ‘Penfolds’ is ‘Ben Fu’ and the characters ‘奔富’ are pronounced… and transliterate to… ‘Bēn Fù’.”2

Consequently, “Penfolds”, “Ben Fu” and “奔富” all carry the same meaning to Mandarin and Cantonese speakers.

Australian Rush Rich Winery Pty Ltd (with others) (Rush Rich) exported a range of wines with the following Chinese characters on the label:

  • “奔富”, meaning “Ben Fu”;
  • “奔富酒庄”, meaning “Ben Fu winery”; and
  • “澳大利亚奔富酒庄”, meaning “Australia Ben Fu winery”.

It appears that Rush Rich intended to misappropriate the “Penfolds” brand in order to boost sales in China.3

Southcorp commenced trade mark infringement proceedings against Rush Rich on the basis that Southcorp owned the following registered Australian trade marks:

  • “PENFOLDS”;
  • “BEN FU”; and
  • “奔富”.

Southcorp applied for summary judgement.

To succeed, Southcorp had to show that Rush Rich had no reasonable prospect of successfully defending the claim.4

Summary judgment

The Court found that Rush Rich could not defend Southcorp’s claim.

A Mandarin or Cantonese speaking consumer (with an imperfect recollection) could mistake the counterfeit wine as the genuine article.5

Importantly, Rush Rich’s use of the brand “奔富” was found to infringe Southcorp’s “PENFOLDS” and “BEN FU” marks, given the aural similarities.6

Further, by exporting its products to China, Rush Rich had used its counterfeit brand in Australia as a trade mark.7

The Court ordered Rush Rich to pay Southcorp $351,916.75 as an account of profit, $23,385.59 in interest and the costs of the proceedings.

Lavan comment

Summary judgment can be a cost-effective way to resolve proceedings.

However, to succeed, the applicant must have a strong case, and the respondent no defence.

If Southcorp had not registered its trade marks, it would have faced an expensive and uncertain trial.

A business must protect its brand now, so that when the time comes, it is equipped to resolve disputes efficiently.

If you require advice in protecting your brand, or representation in a trade mark dispute, please contact Iain Freeman or Andrew Sutton.

 

AUTHOR
Iain Freeman
Partner
AUTHOR
Andrew Sutton
Associate
SERVICES
Intellectual Property and Technology


FOOTNOTES

[1] Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720, [33-35].

[2] Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720, [31].

[3] Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720, [63].

[4] Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720, [22].

[5] Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720, [30] and [62].

[6] Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720, [61].

[7] Southcorp Brands Pty Ltd v Australia Rush Rich Winery Pty Ltd [2019] FCA 720, [55].