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:
Expert Opinion“The latest high profile judgment in China has ruled in favour of Xintong Tiandi taking a bite out of Apple’s IPHONE trade mark portfolio.
“It underlines the need for businesses to consider their branding strategy very carefully and to look strategically at not only core items sold at the time of filing but also what the business might sell in the short to medium term.
It also emphasises that businesses operating in China, should take specialist advice before launching proceedings. Businesses can’t assume that just because they have a well-known trade mark in their local market that it will automatically get the same protection in China without the right IP rights underpinning it.” Amy Au - Associate Solicitor