Lewis Road wins Chinese brand battle
A Chinese businessman based in Auckland has tried, and failed, to claim Lewis Road Creamery’s brand for his own business in Hong Kong.
Dongwen Huang, a Chinese national who first moved to New Zealand in 2001, owned a company in Hong Kong called Keen Top, which operated ice cream parlours and an ice cream wholesale business in China.
Keen Top applied to register the Lewis Road Creamery brand in China in November 2014 for meats, processed foods and staple foods.
Huang argued he wanted to protect Keen Top’s position in the market by registering the Lewis Road brand before the company entered China.
Huang acted after he saw comments in the media from Lewis Road founder Peter Cullinane about the prospect of launching his products in China, specifi- cally Shanghai, which was a market Cullinane said he knew "reasonably well".
Cullinane said the court case was like the "sword of Damocles" and had delayed the company’s plans to enter the Chinese market.
However, he said he had been warned about the tendency of overseas companies to register other firms’ trademarks.
Now the company was registering its trademark in "every which country around the world that we’ve heard of".
Cullinane said with the case over, they company was looking at entering the Chinese market, hopefully within the next 12 months.
The company’s Whittaker’s chocolate milk caused a frenzy when it launched in 2014 and it has since branched out into other flavours of milk, non-flavoured milk, premium ice cream, bread and butter.
In a decision made on May 10, High Court of Hong Kong judge Justice Andrew Chung decided Huang’s argument was not a justifiable reason and was potentially an abuse of the trade mark registration system.
He said the reasoning was "only a polished way of saying the [Lewis Road Creamery] brand was registered essentially as an anti-competition measure".
"Such purpose cannot be a proper reason for registering a trade mark," he said.
His Honour agreed with Lewis Road Creamery’s point that Keen Top’s registration was also not made in relation to ice cream.
"With the above in mind, I concluded that the defence had not been able to establish a defence with a real prospect of success, be it a conspiracy to injure by legal means, or an unlawful conspiracy to injure," he said.