Xintong Tiandi Technology, a Chinese accessories brand, made headlines this spring when a Chinese court shot down Apple’s opposition to the Chinese native’s “IPHONE” trademark application. As a result of the recent ruling from the Beijing Municipal High People’s Court, Xintong Tiandi can continue to use the English language “IPHONE” trademark on its leather goods, the class of goods for which the trademark at issue applies, and Apple must refrain from doing so – even though it has held rights in the “iPhone” name in other classes of goods for years before Xintong Tiandi Technology filed its trademark application.
That’s right: Apple filed to register the “iPhone” trademark in China as early as 2002, five years before Xintong Tiandi Technology filed its trademark application. The problem is, Apple failed to register the “iPhone” mark in Class 18, which covers leather goods, giving Xintong Tiandi Technology the opportunity to apply for trademark rights for the mark in that class of goods. As a result, Apple has been in and out of court disputing the Chinese firm’s rights in the “IPHONE” trademark since 2012, losing the fight when the High People’s Court found that Apple had failed to establish that its “iPhone” mark had achieved well-known status at the relevant time (in 2007 when Xintong Tiandi Technology filed its trademark application). At the time of filing, Apple’s iPhone products had only been launched in China for three months and in the court’s view, had not yet achieved the requisite level of fame, so to speak, in the Chinese market.
While the High People’s Court decision is, in fact, final, Apple may request a re-trial with the Beijing Supreme People’s Court, and the U.S. tech giant has already indicated it intends to do so. However, there is certainly no guarantee that the higher court will rule any differently than those below it.
Aside from the legal headaches confronting Apple in connection with the case, it is a particularly significant proceeding as it emphasizes the need for brands to thoroughly review and formulate their domestic and international trademark portfolio and filing strategy prior to launching products or services. As indicated by the case at hand, it is vital not only to consider the core classes that are directly related to your products and services (such as those directly related to computers, cell phones and various other technological components in apple’s case), but also to consider other classes that cover potential areas of future expansion or related products and services right off the bat.
This is particularly relevant when considering China, where trademark squatting and various forms of infringement are rampant. If this case is anything to go by, such infringement cases will otherwise be incredibly difficult to successfully fight.