The Beijing High People’s Court (BHPC) recently issued a final judgment in an administrative lawsuit concerning a trademark invalidation petition filed by Southcorp Brands Pty Ltd (“Southcorp”). Represented by East IP Law Firm, Southcorp successfully overturned the first-instance judgment and the China National Intellectual Property Administration’s (CNIPA) decision upholding the disputed trademark. The BHPC ordered CNIPA to issue a new decision, paving the way for the invalidation of a trademark that had been registered in bad faith more than a decade ago.

Southcorp Brands is part of the Treasury Wine Estates group. Its well-known wine brand “PENFOLDS” (known in Chinese as “奔富”) entered the Chinese market in the 1990s. Through years of marketing and sales, both “PENFOLDS” and “奔富” have gained significant recognition and a strong reputation in China, and have been recognized as well-known trademarks on multiple occasions.

In 2015, Mr. Wu applied to register the trademark “PENFOLDS奔富” for goods including stationery and folders in Class 16. He also applied to register two “BENFU奔富” trademarks in Classes 16 and 18, demonstrating a clear intent to capitalize on the reputation of the well-known brand.

Southcorp petitioned CNIPA to invalidate the disputed trademark, arguing that it infringed rights associated with its well-known “PENFOLDS/奔富” trademarks and had been registered by other improper means. CNIPA rejected the petition and upheld the registration. Represented by East IP Law Firm, Southcorp challenged the decision in court. After losing at first instance, it appealed to the BHPC.

Appeal Reverses Earlier Decisions

During the second-instance proceedings, East IP submitted extensive evidence showing that Southcorp’s “PENFOLDS” and “奔富” trademarks had already achieved substantial recognition before the filing date of the disputed mark. East IP argued that the combination of “PENFOLDS” and “奔富” in the disputed trademark was a deliberate imitation of Southcorp’s well-known earlier marks.

East IP also pointed to the two additional “BENFU奔富” trademarks filed by the third party as evidence of bad-faith intent. In addition, the third party held several other trademark registrations but failed to provide a reasonable explanation for its filing pattern or demonstrate genuine commercial use. East IP further relied on relevant precedents in similar cases to support the argument that the conduct fell within Article 44(1) of the Trademark Law, which addresses registrations obtained “by other improper means.”

The BHPC ultimately upheld Southcorp’s appeal, found that the disputed trademark had been registered in bad faith, and applied Article 44(1) of the Trademark Law to declare the registration invalid.

Partner Hope Yang, lawyer Alicia Ma, and Joying Tan provided comprehensive legal support throughout the case.