Apple loses its IPAD trademark in China

On 5th December 2011 the Intermediate People’s Court in Shenzhen, Guangdong rejected Apple’s claim of ownership of the IPAD trademark. The court held that Proview Technology Shenzhen Company Limited had prior registration of the IPAD trademark. Proview Technology Shenzhen is said to be the largest development and manufacturing centre of Proview International Holdings Ltd, a Taiwanese enterprise which has been listed on the Hong Kong Stock Exchange Market since 1997.

From 2000 to 2004 Proview International Holdings Ltd, a flatscreen contract manufacturer, attempted to sell its own line of tablet computers worldwide and secured registration of the IPAD trademark in various jurisdictions, including the European Union, Mexico, South Korea, Singapore and Indonesia. In 2001, long before the launch of Apple’s iPad tablet in China, Proview Technology Shenzhen registered the IPAD mark in China.

In 2006 another Proview company, Proview Electronics Taiwan, reached an agreement to sell the IPAD trademark as a global trademark to IP Application Development for US$55,104. IP Application Development acted as a "secret agent" for Apple in arranging the negotiations. However, the parties failed to reach an agreement on whether China should be included in the contract.

Subsequent to the collapsed negotiations, Apple filed an application to register the IPAD mark in China. The application was rejected by the State Intellectual Property Office due to the prior mark owned by Proview Technology Shenzhen. Apple then filed a lawsuit in early 2010 against Proview Technology Shenzhen for having infringed its IPAD trademark in China. Apple argued that its earlier agreement with Proview Electronics Taiwan should be binding on Proview Technology Shenzhen, and thus the latter's registered IPAD trademark should have been transferred to Apple. Apple asked the Chinese court to declare that it was the rightful owner of the IPAD trademark in China. However, Apple's claim was rejected by the court; Apple may still appeal this decision.

Meanwhile, Proview Technology Shenzhen is taking legal action against Apple for trademark infringement in China as Apple began selling iPads in China early last year. A claim of approximately US$1.6 billion has been filed against Apple for the alleged infringement. Proview Technology Shenzhen has initiated proceedings before the courts in Shenzhen and Huizhou in an effort to stop Apple from selling iPads in these cities. The two cases were scheduled to be heard in late December 2011 and early January 2012. Should it succeed in these two cases, it appears that Proview Technology Shenzhen will seek to bring legal proceedings across mainland China , which would potentially prohibit Apple's iPad sales in China.

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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