Apple losing its trademark battle in China is no longer shocking news within the intellectual property world other than putting other proprietors on high alert if their business is expanding to the Mainland, China. Since Apple’s initial $60million settlement with a Chinese company regarding the “IPAD” trademark, Apple subsequently loses yet another battle to another company in terms of its “IPHONE” trademark. Surprisingly, despite the existence of these cases where both results were decision made by the judiciary in China. These decisions pose no obstacles whatsoever in the trademark battle for “Facebook”, which happened recently and once again shook the intellectual property world where Facebook came out unscathed and their trademark “Facebook” has been successfully defended. This article will contrast both cases to show you the reasons behind such a decision.  

APPLE’S “IPHONE” VS. XIN TONG TIAN DI’S “iPhone”

Before we go in deeper into the case, it is important to establish the application history for both trademarks. Apple filed their application for its “IPHONE” mark back in 2002 on the 18th of October (18/10/2002) under classification 9 for electronic goods. Xin Tong Tian Di on the other hand filed their application for its “iPhone” mark back in 2007 on the 29th of September (29/9/2007) under classification 18 for leathered goods. Apple’s trademark is officially registered on 16th December 2003 (16/12/2003) which was renewed and obtained a new valid duration for 10 years from 21st November 2013 (21/11/2013). On the other hand, Xin Tong Tian Di’s trademark was only officially registered on 17th April 2014 (17/4/2014). Apple lodged its opposition on 26th April 2010 (26/4/2010) which was the last day of publication for Xin Tong Tian Di’s mark which was published on 27th January 2010 (27/1/2010).

From the above date, we could derive the opposition proceeding lodged by Apple took almost 3 years to conclude and apparently, the results from the China Trade Mark Office were in favor of Xin Tong Tian Di which led to the current court proceedings to appeal against the Registry’s decision. Despite Apple’s effort in defending its IP rights, the Beijing Municipal High People’s Court ruled in favor of Xin Tong Tian Di and once again Apple loses the battle to yet another Chinese company. Majority reviews took the view that Apple’s trademark rights was the later date after the renewal i.e. 21/11/2013, but it was actually registered on 16/12/2003.

Despite the fact where Apple has in fact filed earlier and registered earlier than Xin Tong Tian Di as well as numerous other success opposition proceedings against the same company. The court ruled in favor of Xin Tong Tian Di and upheld the Registry’s decision due to one main reason. Apple could not prove its “IPHONE” is a well-known mark prior to Xin Tong Tian Di’s date of filing i.e. 29/9/2007. In fact, the first iPhone was only introduced within the Chinese market back at 2009. For this reason alone, the court ruled against Apple and Xin Tong Tian Di is the registered owner of the mark “iPhone” in Class 18 selling leather goods such as phone casing. Apple intends to appeal to the Supreme Court in China, but that is yet another story to tell at a later date.

MARK ZUCKERBERG’S “FACEBOOK” VS. LIU HONGQUN’S “face book”

It is common knowledge that Facebook is not accessible in China, and the Court decision in terms of the trademark “Facebook” aroused speculation amongst netizen whether China has loosened up on its bar against Facebook. Despite its blockage in Mainland China, its victorious outcome in the Court battle was indeed a rare sight which also provides a ray of sunshine on a gloomy day to other big brand owners in relation to their brand name protection. For your information, Ms. Liu, owner of Zhongshan Pearl River Drinks filed 3 applications with the China Trade Mark Office on 24th January 2011 (24/1/2011) which were subsequently opposed by Facebook during its respective publication period. These applications all came under classification which are of no relevance whatsoever with Facebook’s business nature i.e. Class 29 for dried food and vegetables; Class 30 for coffee, tea and various confectionaries; and Class 32 for beer and non-alcoholic beverages. These Oppositions were obviously objected by the China’s Trademark Review and Adjudication Board, twice for that matter, which led to the current Court proceeding in the Beijing Municipal High People’s Court. 

Under Chinese laws, foreign companies are required to prove their brands are well-recognized in China. Apple failed to prove on this aspects, but apparently Facebook, despite being blocked in China, was able to showcase substantial evidence of its reputation. The Court held that Ms. Liu’s applications filed in 2011 labelling foods and beverages with the mark “face book” was an obvious act of copying and/or imitation which harmed fair market competition and ordered the Registry’s for reconsideration which would most likely ended in revocation of registration. In fact, Ms. Liu appealed against said decision which was dismissed by the second board of Appeal in Court. 

Facebook managed to pull that off due to two reasons. Firstly, Facebook has been providing advertising services for numerous Chinese company in foreign countries such as Air China to promote its flight route years before Ms. Liu’s application date. Furthermore, the recent active activity of Facebook CEO Mr.  Zuckerberg’s in China has stirred up positive impression amongst the public of China on his company. Secondly, Facebook has over hundreds of applications within the China trademark register (registered and pending) where the earliest application was filed back at 2006. These evidence were able to showcase that the name “Facebook” was in fact well-known in China prior to 2011 where Ms. Liu’s applications were first filed.

To summarize the above simply, Apple loses the battle was due to its lack of promotional and/or commercial activity of its products in China prior to 2007 which had badly impact its well-known value in China. Facebook on the other hand was able to showcase its value amongst the public in China which led to better protection of its mark in China despite practice a strict first to file first to get basis. Moral of the story is to still secure your mark as early as possible in China, you may thought it is well known here but it may not be well-known in China. Furthermore, it will costs you great amount of time and financial effort to reclaim what was rightfully yours. 

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