China: iPad Drama: Apple’s Fight For The Rights To The iPad Trademark In China Continues

In its ongoing battle to secure trademark rights to the iPad trademark in China, Apple has appealed a decision of Shenzhen's Municipal Intermediate People's Court, which ruled that Proview Technology Shenzhen is the owner of the iPad trademark, to the Higher People's Court of Guangdong Province. Arguments were heard on February 29, 2012, and the court must decide whether Apple is the rightful owner of two iPad trademark registrations issued in China in 2001.


Proview International Holdings Limited (Proview Hong Kong) is an investment holding company that was listed on the Hong Kong Stock Exchange in 1997. It has a global network of affiliates that manufacture and sell consumer electronics. Two of its affiliates are Proview Technology, located in China (Proview Shenzhen), and Proview Electronics Co. Ltd., located in Taiwan (Proview Taiwan). In early 2000, Proview Taiwan manufactured and launched an all-in-one Internet terminal named iPad. The product was ultimately discontinued years later. It is reported that between 2000 and 2003, while the product was viable, Proview Taiwan secured 10 trademark registrations for the marks I-PAD, IPAD, and iPAD in the European Union, Indonesia, Mexico, Singapore, South Korea, Thailand, and Vietnam. In 2001, Proview Shenzhen applied to the Chinese Trademark Office (CTMO) for the registration of the mark IPAD. By most accounts there is no indication that Proview Taiwan's or Proview Shenzhen's acquisitions of trademark registrations represent a case of "trademark squatting," as all of this filing activity occurred nearly a decade before Apple's iPad tablet was launched.

In 2009, Proview Taiwan negotiated and signed a Trademark Transfer Agreement with a United Kingdom company, known as IP Application Development Co. Ltd. (UK IPAD), agreeing to assign its global iPad trademark rights for a reported approximate value of $55,000. The schedule of the assigned trademark rights included two trademark registrations for the mark iPad that were registered in China. UK IPAD then reportedly entered into an agreement conveying the iPad trademark portfolio to Apple in February 2010. Apple's iPad went on sale in the United States in April 2010.

When Apple attempted to record the trademark assignment agreement with the CTMO, the CTMO rejected the assignments, finding that the iPad trademark registrations were owned by Proview Shenzhen and not Proview Taiwan, the party that had signed the initial assignment agreement with UK IPAD. As is common practice in China, the China-based affiliate, Proview Shenzhen, and not the foreign-based parent, holding, or affiliate company, had secured registration for the iPad marks in China.

Apple and UK IPAD filed suit against Proview Shenzhen in the Shenzhen Intermediate People's Court for breach of contract, alleging that the agreement signed by Proview Taiwan, assigning its global trademarks for the iPad, included the iPad trademark rights in China. Documents reportedly reviewed by the Chinese court included a copy of the agreement with a listing of 10 iPad marks registered in nine different countries around the world. The Chinese trademark registrations are included in the schedule.

The Shenzhen Intermediate People's Court ruled that the Chinese affiliate, Proview Shenzhen, owned two valid Chinese trademark registrations, and that Proview Taiwan could not assign what it did not own. In an official press release by the Shenzhen Municipal Intermediate People's Court, the court found:

  1. Proview Shenzhen is a Chinese subsidiary of Proview International Holding Company
  2. In 2001, Proview Shenzhen obtained two trademark registrations from the CTMO for the marks iPad (stylized) and iPAD
  3. In 2009, UK IPAD began negotiations with Proview Hong Kong over acquisition of the iPad trademarks
  4. In 2009, UK IPAD signed an agreement with Proview Taiwan, wherein Proview Taiwan agreed to transfer all the rights owned by Proview for a price of $55,000
  5. In February 2010, Apple and UK IPAD signed a "rights transfer agreement" assigning all rights to relevant trademarks from UK IPAD to Apple
  6. As of the date of the decision, December 5, 2011, the transfer registration process, otherwise known as registration of the assignment with the CTMO, was not effectuated

The Court noted that Proview Shenzhen did not participate in negotiations nor authorize others to dispose of their trademarks, and ultimately that the agreement is not binding on Proview Shenzhen. This trademark infringement case was arguably decided under principles of contract law, with the Shenzhen Court agreeing with the decision of the CTMO, holding that Proview affiliates Proview Shenzhen and Proview Taiwan are two different legal entities, and that an affiliate does not have the authority to assign a trademark that it does not own.

Current Posture

A pple filed an appeal with the Higher People's Court of Guangdong Province and, while arguments have been heard, a decision has not been rendered. Should either party not find the decision favorable, an appeal to the Supreme People's Court, the highest court in China, is possible. The SPC has recently accepted a large number of particularly complicated intellectual property cases and in December 2011 issued trial practice guidelines for trademark infringement cases (Opinions on Exerting the Function of Intellectual Property Rights Judgment to Facilitate Socialist Cultural Development and Prosperity and Promote Independent and Coordinated Developments).

Proview Shenzhen meanwhile has reportedly lodged complaints with more than 40 branches of the State Administration for Industry and Commerce in China, an agency with power to seize infringing products. Proview Shenzhen also has filed civil actions in multiple provinces accusing Apple of trademark infringement and demanding injunctive relief to stop Apple from selling the iPad in China and exporting iPads manufactured in China. A court in Shanghai has refused to grant the injunction, but a court in Huizhou has granted such an injunction.

Proview Shenzhen also has brought its battle to the United States. Proview Shenzhen, with its U.S. affiliate, Proview USA, has filed a complaint in the Superior Court of the State of California in Santa Clara County Court accusing Apple of committing fraud during the negotiation process by creating UK IPAD, a special-purpose entity with the sole purpose of carrying out the purchase of the trademarks, and not disclosing that it was acting as an agent of Apple.

At least in the near term, it appears that this matter is far from resolved.

Lessons Learned

T racking ownership of assets in China often presents challenges, and it is common for assets to be owned by parties other than the party claiming ownership. As a result, due diligence to determine the owner in fact of the assets subject to an agreement is critical. A comprehensive trademark search of the CTMO database would have revealed the actual owner of record.

Moreover, unlike in the United States, in China trademark assignments should be recorded. According to the current Regulations for the Implementations of Trademark Law Article 24. Notice of an Assignment, the signatures of the trademark registrant of record and the assignee should be filed immediately with the CTMO. The filing of the trademark assignment likely would have uncovered the correct owner, as the assignment likely would have been rejected by the CTMO. At that time, the problem could have been corrected, or at least Apple would have been on notice of the problem with the ownership of the trademark. Apple, in assuming that the assignment agreement with Proview Taiwan was valid, launched the iPad in mainland China before its assignment with the CTMO was examined and recorded.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
HFG Law & Intellectual Property
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
HFG Law & Intellectual Property
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions