US technology giant Apple has lost its latest court battle
over the rights to use the ‘iPhone’ trade mark in China.
The circumstances are not foreign to Apple - in 2012, the
company paid $60 million to settle a similar dispute regarding the right to use
the ‘iPad’ name in China.
In this matter, Apple applied for the ‘iPhone’ trade mark in
China in 2002 for computer hardware and software in China. However, Chinese company Xintong Tiandi applied
for a trade mark for leather goods bearing the word ‘iPhone’, which was
approved before Apple’s 2002 application.
According to Chinese law, to enforce their trade mark rights
Apple was required to prove that the ‘iPhone’ brand was well-known within the
Chinese borders ahead of Xintong Tiandi’s registration. As Apple did not begin selling iPhones in
mainland China until 2009, the Beijing Municipal High People’s Court dismissed
Apple’s appeal on the basis that it could not prove that the ‘iPhone’ brand was
well-known in China at the relevant time.
Apple intends to request a retrial with the Supreme People’s
Court of China.
The ‘first to file’ nature of the trade mark
system in China is such that unrelated third parties can secure trade mark
registrations for trade marks of foreign traders if they file in China first. Foreign businesses often fail to take
adequate precautions to protect their intellectual property in China. Major international brands and celebrities such
as New Balance and Michael Jordan have faced similar difficulties with securing
trade mark registrations in China. Where
a product is expected to have global reach, early registration of trade marks
in China is critical.
Brand owners should also keep records of evidence of trade mark use and
well known reputation along with arranging for a trade mark watching service to
monitor new applications for similar marks that should be opposed. Filing the
English translation of the brand only may not be sufficient and expert advice
should be sought on filing the Chinese character and translation equivalents to
ensure broad protection.
McCullough Robertson offers a full service trade marks practice and can
assist you with seeking trade mark protection for your brand in China. For more information or assistance protecting
your intellectual property in China, please contact us:
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| Alex Hutchens |
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| Belinda Breakspear |
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| Paul McLachlan |
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| John Kettle |
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