Apple's Trademarks Vulnerable in China
The iPhone and iPad trademarks are likely to be used by at least 39 Chinese firms because Apple has been careless in failing to register its iPhone and iPad brands in categories other than the obvious ones, according to China intellectual property experts.
Six firms had pushed trademark applications for those names all the way to preliminary approval. For example, Apple only managed to prevent approval for use of the iPhone name by a flashlight maker by raising objections on the final day of the 90-day disclosure period, according to the trademark office of China’s State Administration for Industry and Commerce.
Similar laxity in performing due diligence on the ownership of the iPad name has led to December’s judgment awarding rights to that name to Shenzhen Proview. Apple is currently facing seizures of iPads in retail stores in several major cities. Proview is in the process of expanding seizures to 40 cities and is seeking to have the trade ministry ban Apple from either importing or exporting iPads. Because iPads are made in China, such a ban would effectively cripple Apple’s global sales of the product.
Hiking shoes, veterinary drugs and diapers are just a few of the categories in which at least 39 Chinese firms have sought to register the iPhone and iPad names, according to China Daily. China’s trademark law allows 45 separate categories of commercial products. A brand’s trademark is only protected within the categories in which it is registered. The exception is if the brand can be deemed “a famous brand” at the time rivals seek to register it for different categories.
Cai Zhiyong applied in 2010 to register the iPhone trademark for his Zhejiang-based firm’s lamps and flashlights.
“Apple objected to our application on the last day of the three-month disclosure that began in June 2011,” said Xu Jie, the lawyer representing Cai’s firm.
On Friday Xu received a letter from the trademark office requesting supporting evidence within a month after Apple claimed Cai’s firm had infringed iPhone trademark.
Apple is claiming that its iPhone had gained the status of a “famous brand” and could not be registered under other categories. Xu is arguing that the brand’s current fame doesn’t warrant the presumption that it had attained that status in China back in 2010.
Xu said he was surprised to learn in 2010 that Apple had not registered its trademarks in all of China’s 45 commercial categories.
“My big clients, mostly manufacturing firms based in Yiwu, almost always register their trademarks in all product and service categories to protect and nurture their brands,” Xu said.
“It seemed to me that Apple did not care much about the China market. So the dispute was caused by Apple’s brand strategy flaws.”
Xu expects the dispute over the iPhone name to last two to three years.