On 29 September 2007, a PRC entity, Xintong Tiandi Technology (Beijing) Company Limited ("Xintong"), filed a trademark application for the word "IPHONE" in class 18 ("Opposed Mark") with the PRC Trade Marks Office ("TMO"). The goods covered by the application are a range of leather goods, wallets and cases under sub-classes 1801 and 1802. On 26 April 2010, Apple Inc. ("Apple") filed an opposition against the Opposed Mark. It should be noted, however, that Apple does not have any China trademark applications or registrations for the word "IPHONE" in class 18 that pre-date the filing date of the Opposed Mark.

Both the TMO and, subsequently, the PRC Trademark Review and Adjudication Board rejected Apple's opposition claim and allowed the application for the Opposed Mark to proceed to registration. Apple then filed an appeal to the Beijing No. 1 Intermediate People's Court but had to suffer another legal defeat. The Intermediate People's Court's decision was, inter alia, based on the fact that most of the evidence of use of the word "IPHONE" submitted by Apple was taken after the date of filing of the Opposed Mark; and that the evidence presented was insufficient to show that the word "IPHONE" had attained well-known status before the application date of the Opposed Mark.

Appeal to the Beijing Higher People's Court

In 2016, Apple filed a further appeal to the Beijing Higher People's Court and argued, inter alia, that the word "IPHONE" had attained an extremely high level of fame and distinctiveness in respect of goods in class 9, such as mobile phones, and should therefore be recognized as a well-known trademark. Apple further alleged that the Opposed Mark was a blatant copy or imitation of Apple's well-known trademark. The Higher People's Court, however, found that Apple had failed to establish that its "IPHONE" mark had achieved well-known status at the relevant time, which is the date of filing of the Opposed Mark. At the time of the filing date, Apple's iPhone products had only been launched in China for three months.

Whilst the Higher People's Court decision is final, Apple may request for a re-trial with the Beijing Supreme People's Court. Apple has already indicated its intend to do so.

Conclusion

This case emphasizes the need for international brands to thoroughly review and formulate their trade mark portfolio and filing strategy prior to launching relevant product or services in a particular market. It is vital to not only consider the core classes that are directly related, but also other classes that cover potential areas of future expansion or related products and services.

Originally published on July 11, 2016

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