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Danone sued for a trademark it had already signed away — and exited the Wahaha venture

A 1996 deal would have given the joint venture the Wahaha trademark; when approval failed twice, a licence replaced it. Danone sued anyway — and lost.

Danone · Wahaha Group · 2009-09-30

What happened

In February 1996 France's Danone and Hangzhou Wahaha Group agreed that the Wahaha beverage trademark would be transferred to their joint venture. China's trademark office twice declined to approve the transfer, and in December 1999 the parties signed a licence agreement instead — terminating the transfer deal.

When the partnership broke down in 2007, Danone filed arbitration at the Stockholm Chamber of Commerce, claiming the brand belonged to the venture. Chinese arbitration and courts ruled the other way: in December 2007 the Hangzhou arbitration commission found the transfer agreement had ended in 1999, and by May 2009 Hangzhou courts had confirmed the trademark — including overseas registrations — belonged to Wahaha Group.

On 30 September 2009 the two sides settled: Danone sold its 51% stake in the joint ventures to Wahaha for €300 million, and every legal proceeding around the world was dropped. Danone exited one of China's biggest drink businesses, and the brand it had pursued through years of litigation stayed with its former partner.

Why it happened

  • The contract said transfer, but the approval that would have made it real never came — the parties carried two different stories about who owned the brand for a decade.
  • When an approval is a condition of a deal, its absence has to be resolved on paper; the 1999 licence contract did exactly that, and later litigation could not undo it.
  • Danone fought in Stockholm and elsewhere, but the trademark lived under Chinese registration law — the forum chosen could not move the law that governed the mark.
What it costtrademark lost; sold 51% stake for €300Mcostly

The lesson

In a joint venture, brand ownership that depends on an approval must be written down for the case where the approval never comes — arbitrators read the paper that exists.

Sources

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