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
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.
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
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issues and developments of interest. The foregoing is not a
comprehensive treatment of the subject matter covered and is not
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