Exporting to China: protecting your wine brand

Mark Hamilton, Managing Partner and Commercial Lawyer at Grope Hamilton Lawyers, discusses how to protect an Australian wine brand in China. He delivered a presentation on this topic at the 6th Annual Wine Law Conference. 

Mark Hamilton

Having trademark protection in Australia and your overseas export countries for your brand means two things. Firstly, it entitles you to utilise the registered trademarks for your wine products without substantial risk of interference by third parties. Secondly, it allows you to take steps to stop another producer from marketing wine in breach of your trademark.

International protection

A trademark can be protected overseas either on a country by country basis, or via the Madrid Protocol international registration system. Trademark protection via an international registration can cover nearly 100 countries that are currently signatory to the Madrid Protocol. A full list of these countries is available on www.wipo.int.

Brand value is increasingly viewed in a global sense given the increasing pace of globalisation, especially with respect to the sale of Australian wine.

When planning to commit the time, money, effort and patience necessary for effective brand development, Australian wine producers should build their brand from the secure base of trademark protection in Australia and all conceivable export markets. This may be critical to future “buy-out” value.

Registrations of trademarks in China

Australian wine producers should register their brand name and logo in China both in English in class 33 (alcoholic beverages except beer) in accordance with their home trademark, as well as the Chinese language version of the trademark, before commencing export to China.

When registering a Chinese language version of an Australian trademark, it should be borne in mind that literal translations are potentially problematic. There may be various ways, under the translation conventions, in which the translation can occur. “Transliteration” refers to the process of translation into another language recognising its phonetic characteristics.

Registering international trademarks

Australian trademark owners should be aware that different countries have different rules when it comes to recognition of trademark rights. Some countries follow a “first to file” rule, whereas others, like Australia, recognise the rights of those who are “first to use” a trademark. A first to file trademark system grants rights to the person who first filed a trademark application, even if another party can show prior use of the trademark. Some countries which follow a “first to file” system include China, Italy, Portugal and Sweden (IP Australia, 2016).

In “first to use” countries like Australia and America, unlike in China, a common law system exists whereby the first person to use a trademark will have priority over a person who files a trademark application at a later date (IP Australia, 2016). The common law recognises that property rights can occur by usage.

Trademark problems in China

The problem of someone else registering your wine brand in China is a common one, because of China’s first to file trademark registration system. Courts in China are beginning to recognise the inherent problem of local serial pirates registering foreign trademarks en masse both in terms of bad faith but also in terms of clogging up the courts (Whole Foods v Everyday Value).

Since 1978, Mark Hamilton has been part of Adelaide’s legal profession, specialising in commercial and business legal advice and services, business disputes and litigation as well as extensively in wine law since the 1990’s. Since 1983 he has been at the helm of Adelaide commercial law firms. He has been managing partner of Grope Hamilton Lawyers, since 1991. Grope Hamilton Lawyers is a specialised commercial law firm with a team of 20 Lawyers, conveyancers and support staff. Mark has also been extensively involved with civic affairs and public administration, primarily thirteen years as an Adelaide City Council Member, including a term as Deputy Lord Mayor, as well as being appointed by the South Australian Government to the State Heritage Authority, the Grand Prix Board and the Women’s and Children’s Hospital. Mark also has extensive past and current experience as a company director including the wine industry. Mark’s recent directorships include: Telemall Communications, an Australia wide “message on hold” provider; and chairman of the board of management of The Beach House entertainment facility at Glenelg, Australia. In the early 1990s Mark’s background in the wine industry led him to successfully revive a former family wine business, Hamilton’s Ewell Vineyards which in 1837 was the first winery established in South Australia. Mark and his family currently have extensive vineyard interests in four wine regions. Contact Mark at mhamilton@gropehamiltonlawyers.com.auor connect via LinkedIn.

You can also connect with Grope Hamilton Lawyers via LinkedIn.