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Apple to take trademark dispute to China’s highest court

Xintong Tiandi Technology won lower court case to use the IPHONE mark on a range of leather goods

PUBLISHED : Thursday, 05 May, 2016, 10:22am
UPDATED : Thursday, 05 May, 2016, 4:59pm

Apple plans to take its legal battle over the iPhone name in China to the mainland’s highest court as major Western brands continue to get embroiled in trademark disputes in the world’s second-largest economy.

“We intend to request a retrial with the Supreme People’s Court and will continue to vigorously protect our trademark rights,” Apple said on Thursday in a statement sent to the South China Morning Post.

The California-based technology giant recently lost its appeal in the Beijing Municipal Higher People’s Court, which ruled that Xintong Tiandi Technology (Beijing) can use the “IPHONE” trademark on a range of leather goods.

That decision legally ended the exclusive rights of Apple to use the iPhone name on mainland China.

“Apple’s trademark woes in China are typical of those faced by other Western brands, and are symptomatic of China’s approach to trademark protection,” said Paul Haswell, a partner at international law firm Pinsent Masons.

Apple loses another trademark fight in mainland China

The iPhone, Apple’s flagship product, was the third largest-selling smartphone on the mainland last year behind the Android devices from Xiaomi and Huawei Technologies, according to research firm IDC.

“Apple is disappointed the Beijing Higher People’s Court chose to allow Xintong to use the IPHONE mark for leather goods when we have prevailed in several other cases against Xintong,” the Apple statement said.

A source said the Beijing court’s ruling “relates to only one category of trademark: imitation leather, leather, wallets, purses, leather thread, leather passport wallets, leather key cases, leather straps and leather trimmings for furniture”.

The court ruling granted Xintong use of the Apple trademark for that category of products, which it had first applied for on September 2007.

Apple applied for the iPhone trademark in China in October 2002, but it was not approved until 2013. That trademark covered so-called Class 9 electrical and scientific apparatus, according to a report in the state-owned Legal Daily.

Another source said Apple had previously “succeeded in opposing and cancelling other marks, including ‘IPHONE’, ‘iphone shop’ and ‘ipad’ marks, sought by this company [Xintong] in other trademark categories”.

Proview staves off Hong Kong delisting

Haswell described intellectual property protection on the mainland as “fatally flawed”.

“The system allows so called trademark trolls to keep a close eye on brands which are successful outside of China, register trademarks associated with that brand in China, and then hope either to profit off their goodwill or achieve a large cash settlement with the brand itself,” he said.

The legal setback over its exclusive use of the iPhone brand on the mainland may have evoked a sense of deja vu for Apple, which had to settle a lengthy and acrimonious fight over the iPad name in 2012 with a US$60 million payout to Proview Technology (Shenzhen).

That iPad trademark settlement was substantially less than the initial US$2 billion claim made by the mainland company.

Haswell said other famous Western brands involved in trademark rows in China include luxury fashion house Burberry, which sought protection for its check pattern design in 2013; Tesla, which agreed to a 2014 settlement with a private individual who was first to register the electric carmaker’s trademark on the mainland; and sportswear company Under Armour, which recently accused Chinese athletic apparel maker Uncle Martian of copying its logo.