The case which shook the intellectual property world happened approximately 6 years ago in 2010 when Apple decides to launch its iPad into the many desired Chinese market in the People’s Republic of China. Of course, being a world renowned company such as Apple would undoubtedly through various means to secure its interest by any means necessary. At that moment, the name ‘IPAD’ has been registered by Shenzhen Proview Technology, an electronic company which is struggling financially.  Having that knowledge, Apple claimed that they had secure the global rights to the use of ‘iPad’ mark from Proview’s Taiwanese affiliate for $55,000 and was content that all things are in order, or so they thought. The dispute occurs soon after Apple announced its launch into China and was noticed by Proview.

You would have thought, having secure the name from Proview’s affiliate for $55,000 and Proview would have just stay quiet and allow Apple to do whatever they want. In fact, the company in Proview’s group that actually owned the registration was not a party to the transfer agreement. As such, the name had not been effectively acquired by Apple, yet. Nonetheless, being a civil law country such as China, the Chinese Court ruled that Proview still owned the name in China which was registered in 2001 and was not bound by that the fact where the name was purchased for $55,000 even though it was part of the same company. An injunction was also granted to stop Apple from selling its iPad from its local chain stores. Due to marketing and internal reasons, mediation was sought by Apple in order to settle the matter out of Court which was also requested by the Guangdong People’s High Court who had since announced “Apple has transferred $60m to the account of the Guangdong high court as requested in the mediation letter”.

Proview originally sought $400 million as means to settle, but due to its business condition they have to accept the offer of $60 million instead to expedite the process of the dispute resolution. It is also a known fact that Apple’s ‘iPhone’ was also registered in Brazil a local business called Gradiente back in 2001 in the form of ‘iphone’. Although local rulings didn’t prohibit Apple from selling its smartphones in Brazil, but they don’t own the name either, yet. The appeal lodged by Apple is still on going for the time being.

The above case would undoubtedly became a landmark case in China for future trade mark infringement proceedings. China, which has strong economy potential for all businesses and would undoubtedly attracts all sorts of investments. Therefore, securing your trade mark rights in China would come on top of your priority list.  Unlike in the US and EU, China’s trade mark laws do not recognize unregistered trade mark rights based on acquired distinctiveness through use or goodwill; trade mark application is strictly on a “first-come-first-served” basis and once a mark is registered, the grounds to challenge a registration is very limited and difficult. 

“FAME IS NOT EVERYTHING”

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