KEY CASE FOR APPLE DRAGS ON IN CHINA JURISDICTION REPORT: CHINA
Stephen Yang Peksung Intellectual Property Ltd
Te final instance (second instance) hearing of the dispute between Apple Inc and Proview Technology (Shenzhen) Co Ltd over the use of the iPad trademark, was held in the Guangdong High People’s Court on February 29.
Te cause of this dispute can be traced back 11 years. Proview Taipei, like Proview Shenzhen a subsidiary of Proview International, registered the iPad trademark in a number of countries and regions as early as 2000. Proview Shenzhen registered the trademark in two classes in mainland China in 2001. At that time Apple had not yet launched its tablet PC product iPad.
In 2009, Apple founded IP Application Development Limited (IPADL), a company registered in the UK seemingly for the sole purpose of buying the iPad trademark on a global scale. Because this company’s name has the same abbreviation as iPad, as alleged by IPADL, IPADL contacted Proview and asked to buy the trademark. In 2009, Proview Taipei sold the global trademark right of iPad to IPADL and then Apple bought the rights to use the trademark from IPADL. However, Proview said that the iPad trademark right in China was not included in the transfer. Proview Shenzhen claims it still owns the iPad trademark right in China and Proview Taipei has no right to sell it.
Apple and IPADL brought a lawsuit against Proview Shenzhen to the Shenzhen Intermediate People’s Court, claiming the iPad trademark and RMB4 million ($630,000) compensation. Te Shenzhen Intermediate People’s Court accepted the case in April 2010. Aſter three hearings were held, the court made the first instance ruling in December last year, rejecting the claim of Apple and IPADL. Proview Shenzhen won at the first instance.
Shenzhen Intermediate People’s Court held that if the plaintiff, Apple and IPADL, would like to obtain another’s trademark via business means, they should bear a higher duty of care and conclude a trademark assignment contract with the trademark holder as well as going through the necessary procedure of trademark assignment in accordance with Chinese laws. Te court further held that in this case, the trademark assignment contract was signed between the plaintiff, IPADL and Proview Taipei, and that ‘apparent-agency’ was not established between IPADL and the defendant, Proview Shenzhen. Terefore, the court held that the plaintiff’s claims lack factual and legal basis and thus should be rejected.
Apple appealed to the Guangdong High People’s Court in January 2012. Te court held the second instance hearing of this trademark dispute on February 29, 2012. Apple and Proview Shenzhen provided new evidence and debated fiercely in the court. Te chief judge summarised two key points in this case: first, whether trademark assignment can be established
46 World Intellectual Property Review March/April 2012
between Proview Shenzhen and IPADL; and second, whether Proview Shenzhen is bound by the trademark assignment contract between Proview Taipei and IPADL. Aſter a five-hour hearing, the court was adjourned.
Te chief judge mediated between Apple and Proview Shenzhen at the end of the hearing. Te two sides had only attorneys present in the court hearing, who said they would make final decisions aſter discussion with their clients. A final ruling by the high court is expected to take several weeks. Although the two sides debated fiercely in the court, it is believed that this case may still be concluded via mediation.
Stephen Yang is a partner at Peksung Intellectual Property Ltd. He can be contacted at:
yyong@peksung.com
www.worldipreview.com
“AFTER THREE HEARINGS, THE COURT MADE THE FIRST INSTANCE RULING IN DECEMBER LAST YEAR, REJECTING THE CLAIM OF APPLE AND IPADL. PROVIEW SHENZHEN WON AT THE FIRST INSTANCE.”
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76