Asian rip-offs: Aussie businesses “day to day” battle with copycats
Wednesday, December 10, 2014/
Australian restaurant chain Meat and Wine Co is pursuing a Malaysian business which has copied its name and logo
Increasing numbers of Australian businesses are becoming embroiled in legal battles with businesses in Asia which are ripping off their names, logos and businesses.
As SmartCompany reported last week, Australian restaurant chain Meat and Wine Co is pursuing a Malaysian business which has copied its name and logo, but the steak chain is not alone.
Top intellectual property lawyers say the problem is widespread and continuing to grow.
Last year the Australian entrepreneurs behind Bali’s legendary Ku De Ta beach club went all the way to the High Court in Singapore to battle a business using Ku De Ta’s name and concept.
The Ku De Ta partnership – comprising Australians Guy Neale, Aki Kotzamichalis and Arthur Chondros, Indonesian businessman Made Wiranatha, and the White Horse Trading Company – has run the club in Bali since 2000.
The owners launched legal action after discovering a rival Ku De Ta restaurant, bar and club had launched in Singapore on top of the iconic Marina Bay Sands complex.
Singapore’s High Court dismissed the trademark suit last year on the basis that the Bali club did not have any goodwill in Singapore in 2004 because it was not well known when the Ku De Ta trademark was registered in Singapore.
Ku De Ta Singapore declined to comment to SmartCompany about the dispute.
Iconic Australian wine business Treasury Wine Estates, which produces Penfolds, is also pursuing legal action against businesses in China that have appropriated its trademarks.
The Penfolds trademark has been reproduced sometimes identically and sometimes with slight alterations like “Benfolds” instead of Penfolds.
Trademark infringers are not just selling the wine out of the boot of a van; instead they are serious operations with big stands at trade shows in China.
Richard Hoad, partner at law firm Clayton Utz, says the legal battles demonstrate a common theme.
“While there is a cost to registering a trademark in multiple jurisdictions, you really need to carefully consider how your business might one day grow and the damage that can be done to your brand by imitators,” he says.
Stephen Stern, partner at law firm Corrs Chambers Westgarth, acts for Treasury Wine Estates and describes the practice of appropriating a brand or business’ logo and concept as “absolutely day to day business in Asia”.
Stern says it is not just luxury goods and brands that are in danger of the “interlopers”.
“It is every type of product and business you can imagine,” Stern says. “At the moment I am dealing with thrust bearings which are being counterfeited in China.”
Stern says in the wine industry “interlopers” can register an Australian business’ trademark in China and then block the Australian business from selling to China.
“Other businesses manufacture in China for sale into other countries,” Stern says.
“The interlopers register them with Chinese customs, notify them some counterfeits are going out, not owned by the Chinese owner, and customs seizes goods made by the genuine companies,” he says.
“Anyone who does business with China unfortunately needs to register their trademarks. This is not a question of lawyers trying to encourage business it is a case of giving preemptive, protective advice.”