Boost for Apple in court tussle over iPad trademark

PUBLISHED : Thursday, 10 May, 2012, 12:00am
UPDATED : Thursday, 10 May, 2012, 12:00am


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Apple's legal right to the 'iPad' brand received a big boost after a United States court dismissed a Taiwanese company's lawsuit to reclaim that trademark.

The Superior Court of California in Santa Ana County granted Apple's motion to throw out a complaint filed in February by Taipei-based Proview Electronics based on the two firms' previous agreement to settle all their disputes in Hong Kong. This ruling was made on May 4 but was not previously published.

Proview Electronics, a subsidiary of Hong Kong-listed Proview International, took legal action in the US to void a December 2009 deal that transferred its worldwide rights to the iPad trademark to Apple. It accused Apple and its agents of fraud in acquiring those trademarks, implying that Apple lacked standing to enforce their agreement to exclusively resolve all disputes in Hong Kong.

Superior Court Judge Mark Pierce said that Apple 'provides evidence that plaintiff [Proview Electronics] specifically requested the Hong Kong forum and is litigating there currently'. He added that Proview Electronics did not present evidence to demonstrate that Hong Kong's jurisdiction over their agreement was unreasonable or unfair.

Even so, lawyers for Proview Electronics were upbeat.

'The court's decision to dismiss the case ... was not based on the merits of the case,' said Proview counsel Christopher Evans.

'We are looking forward to presenting the facts in this case to the appellate court.'

Apple spokeswoman Carolyn Wu declined to comment. The company is also in litigation against Proview Technology (Shenzhen), which claims ownership of two mainland-registered iPad trademarks, in the Higher People's Court of Guangdong.

Stan Abrams, a Beijing-based intellectual-property lawyer and professor, said Proview Electronics 'needed to successfully argue that California was the better forum for some reason, which they could not, so the case was tossed'.

Apple in March asked the Hong Kong High Court to ensure that its case against Proview International, its Taiwan and Shenzhen subsidiaries, and the group's bankrupt founder, Taiwanese businessman Rowell Yang Long-san, proceeds to trial on schedule.

That trial would provide final adjudication on Apple's claim that defendants Yang and the Proview group violated their agreement on December 23, 2009, to transfer all their iPad trademarks, including two registered on the mainland, to the technology giant and IP Application Development, a representative company it set up in Britain in 2009 to acquire trademarks to the iPad name.

Hong Kong's Court of First Instance in July issued preliminary injunctions against the defendants, who refused to transfer the two mainland-registered trademarks to Apple.

The company had paid GBP35,000 (HK$425,000) for the Proview group's worldwide iPad trademarks.