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Zema Estate

mdp helped Australian winery Zema Estate protect its brand in China

Background

Established in 1982, Zema Estate is a small family owned and operated winery located in the heart of Australia’s Coonawarra wine region. With a history and heritage dating back to the 1800’s, the ZEMA name is a valuable asset. The Zema name is recognised throughout Australia and internationally, representing one of South Australia’s finest drops.

The Challenge

In 2014, Nick Zema sought mdp’s assistance to protect the Zema name in both English and Chinese characters, in China. Nick was prompted to take such action after learning of the Chinese Penfolds trade mark squatting saga. Unfortunately, the owners of the Penfolds brand failed to register the Chinese name, ‘Ben Fu’ for Penfolds in China, and the name was registered by a competitor who took advantage of China’s ‘first to file’ trade mark system.

Unlike Australia, common law trade mark rights are not recognised in China, so Penfolds’ pre-existing registrations in English did not prevent the squatter from registering ‘Ben Fu,’ and more worryingly Penfolds risked infringing the squatter’s trade mark registration if they were to use the Chinese name to sell its goods. As a consequence, major suppliers and sellers of Penfolds’ wine, such as Intercontinental Hotels removed Penfolds’ products amid fears that they could potentially be liable for damages.

The Solution

mdp regularly protects its client’s brands in China (and other Chinese speaking regions such as Hong Kong and Taiwan), using either the Madrid Protocol or directly through the Chinese Trade Mark Office (‘CTMO’). In the case of Chinese character trade marks it is necessary to file directly with the CTMO, not least because it is important to obtain the advice of a local trade mark agent to adopt the best translation of an English brand into Chinese, before filing.

The Results

Zema Estate now has pending applications in China for:

  • ZEMA; and
  • 哲马 ( translated as ‘zhe’ and meaning sage/wise man, commonly used for personal names and translated as ‘ma’ and meaning horse).

As with all trade marks, Zema Estate’s rights in the above trade marks extend back to the date the applications were filed in China.

In addition, mdp assisted Zema Estate to register the plain word mark ZEMA in Australia, to bolster protection in the Zema name. Previously, Zema Estate only had registered rights in its logos, historically Zema_Logo and more recently Zema_Logo2. Whilst protection for the logos protects the stylistic elements of the brand, it is only a registration for the plain word mark ZEMA that gives Zema Estate a monopoly in the name Zema alone (for its specific goods of interest). In the process of filing new trade mark applications in Australia and China, we advised Zema Estate on the best entity to own the trade marks from both asset protection and tax efficiency perspectives.

Zema Estate is now in the process of finalising its intellectual property structure, which offers its business and importantly its brands, the best possible protection.

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