Experts Say Businesses Should Think Twice Before Taking On Similar Action In China

Intellectual Property experts at law firm Irwin Mitchell have urged businesses to think carefully about their international branding strategy after Apple lost their legal fight in attempting to prevent another company from registering and using the name ‘IPHONE’ in China.

Apple tried to prevent Xintong Tiandi Technology in China from registering the name “IPHONE” on leather goods, meaning the company can continue to use the well-known name on its products.

Unless a trade mark is a well-known brand it is not easy to prevent use of your mark in relation to unrelated goods and services and this seems to be the rationale in this case.  According to the official Legal Daily newspaper, the Beijing Municipal High People's Court ruled in favour of Xintong Tiandi Technology because Apple could not prove “IPHONE” was a well-known brand in China before Xintong Tiandi filed its trademark application.

The background to this was that Apple filed a trademark application in China for “IPHONE” for electronic goods in 2002, but didn’t launch the iPhone in China until 2009.  Xintong Tiandi then filed a trade mark application for "IPHONE", together with ® - (the registered trademark symbol) covering leather goods in 2007 (2 years before the launch of the iPhone in China) and got it registered in 2010. 

Apple opposed the original grant of the trade mark and when that bid failed, Apple filed a lawsuit in a lower Beijing court.  They lost this case and the American giant was forced to appeal to the higher court.

The higher court ruled that Apple could not prove it was a well-known brand in China before Xintong Tiandi filed its trademark application in 2007 as Apple didn’t launch the iPhone in China until 2009.This meant that Apple couldn’t stop Xintong Tiandi Technology from using iPhone on leather goods because of the differences between their respective goods.

Amy Au, intellectual property expert at Irwin Mitchell, said: