Now, being one of the well-known smartphones, iPhone possesses high market share in China. Almost everyone considers that as a trademark, “IPHONE” should particularly belong to Apple. However, a recent administrative judgment broke up Apple’s monopoly plan with regard to their ownership of “IPHONE” series trademarks.
On March 31, 2016, the Beijing Municipal High People’s Court ruled in favor of Trademark Review Adjudication Board and Xintong Tiandi Technology (Beijing) Co., Ltd. (hereinafter referred to as “Xintong Tiandi”) against Apple. Thus Apple was defeated by Xintong Tiandi in the “IPHONE” trademark war in China, and Apple cannot prevent Xintong Tiandi from using the trademark “IPHONE” on their products under the 18th Class designated for leather, leather wallet, leather rope and other goods.
Two fatal reasons caused Apple’s failure in the “IPHONE” trademark fight.
1. Apple failed in providing any evidence to prove that their reference “IPHONE” trademark had already become a well-known mark in China before the registration of the disputed trademark. Therefore, Apple’s claim based on Article 13(2) of the Trademark Law (2001) cannot be supported by the Court.
Article 13(2) of the Trademark Law (2001)
Where a trademark in respect of which the application for registration is filed for use for non-identical or dissimilar goods is a reproduction, imitation or translation of the well-known mark of another person that has been registered in China, misleads the public and is likely to create prejudice to the interests of the well-known mark registrant, it shall be rejected for registration and prohibited from use.
2. Apple did not register all the relevant trademarks for their series products under different trademark classifications.
In practice, when we provide legal advices to our clients who propose to enter Chinese markets to compete with others, we always suggest them to firstly select attractive Chinese trade names and will assist them to register their trademarks in China under different classifications in order to better promote and to well protect their products.
Imagine how Apple wishes the trademark used on their iPhone’s leather cover was theirs. Oops, their dream suddenly shattered into pieces. If Apple noticed the importance of trademark registration under different classifications in an earlier stage during their march towards Chinese market, they would have easily avoided today’s tragedy. Now, apart from the 60 million USD paid for getting back the “IPAD”, losing “IPHONE” should become another severe lesson for Apple. We learnt from it and will endeavor to keep our clients away from such tragedy.