Trademarks in ChinaMay 10, 2016

Apple recently lost what may turn out to be a significant trademark infringement case in China. Apple, having a registration for the mark “IPHONE”in international class (IC) 9, opposed Xintong Tiandi Technology (Beijing) Co., Ltd.’s trademark application for the mark “IPHONE”in IC 18 covering leather goods, including cell phone cases. Apple argued that the IPHONE mark was well-known in China, and therefore any subsequent registration, regardless of the goods or services, should be invalid.

Apple filed an application for the mark IPHONE in IC 9 in October 2002, and the mark was registered in November 2003. However, the iPhone was not announced to the public until January 2007, and iPhones were not made available in China until October 2009. Xintong Tiandi Technology (Beijing) Co., Ltd. filed its application for the mark in September 2007, after the iPhone was announced to the public in the United States, but before the iPhone was available in China.

The main issue before the Beijing High People’s Court was whether the “IPHONE”was a well-known trademark at the time Xintong Tiandi Technology (Beijing) Co., Ltd. filed its application. To be considered well-known in China, the mark must be well-known to the general public in China. As the Apple iPhone was not available to the general public in China until October 2009, after Xintong Tiandi Technology (Beijing) Co., Ltd. had already filed its application for the mark, it is difficult to provide evidence supporting Apple’s claim that the mark was well-known. On appeal, the Beijing High People’s Court held that Apple’s “IPHONE”mark was not well known prior to Xintong Tiandi Technology (Beijing) Co., Ltd. filing its trademark application. As a result, Xintong Tiandi Technology (Beijing) Co., Ltd.’s application for the mark “IPHONE”in IC 18 will be registered.

From a practice based standpoint, when considering registering for a trademark in China, be wary of relying on your mark being “well-known”to block or invalidate the application of another. Therefore, it is highly advisable to file for the mark prior to any public disclosures or announcements, and you may consider filing in additional international classes to prevent a subsequent Applicant(s) from obtaining rights in your mark.

In a more recent matter, the Fujian-based Tingfei Long Sporting Goods Co., debuted a line of athletic apparel and footwear under the brand “Uncle Martian”with design. The logo/mark utilized by Tingfei Long Sporting Goods Co. during the recent launch party will undoubtedly be challenged by the well-known U.S. brand, Under Armour, Inc. Under Armour has a registration in China for its mark in IC 25, and as seen below, the logo utilized by Tingfei Long Sporting Goods Co. appears to have substantial similarities to existing marks. It will be interesting to see how this plays out in the future. Will Tingfei Long Sporting Goods Co. continue to argue that the marks are not similar? And if so, how will the matter be resolved?

Do you see any similarities?