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Trade mark trip ups and marketing mishaps

Over the years, we have assisted a number of companies who have had serious foreign marketing mishaps connected with their trade marks. Companies often spend very large amounts establishing and developing their markets in foreign jurisdictions but sometimes overlook the basic imperative of properly protecting their brands. The growth in supply of Australian wine to the Chinese market has given rise to several unfortunate examples.

With thanks to Fairfax Media, we attach a copy of an article that recently appeared in the Australian Financial Review. The report highlights the problems encountered by Treasury Wine Estates and its famous Penfolds brand in China.

It is important for companies developing foreign markets for their goods and services to ensure at an early stage they have registered trade mark protection in those foreign jurisdictions. But registering the Australian version of their trade marks may not be sufficient. Where an Anglicised foreign version of a trade mark will be developed or where the trade mark in other language characters will be adopted, or could be adopted by an unauthorised third party, we recommend that trade mark protection for those versions should also be obtained.

China still retains a “first to register” trade mark system, although since 1 May 2014, Chinese law gives some recognition to the need for good faith trade mark filing and the rights associated with genuine use prior to the third party application. However, Australian trade mark owners, where possible, should avoid a potentially expensive fight with opportunistic foreign trade mark registrants. That is best done by taking trade mark protection steps at the earliest stage.

Penfolds is not the first Australian brand to fall victim to the foreign trade mark trap and it won’t be the last. It is better to avoid the trap in the first place. Rescue missions cost more.

If you wish to discuss foreign trade mark protection or infringement issues, please contact us.

Australian Financial Review article, Fairfax Media

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