Chinese court decides that “IPHONE” is not a well-known trademark

Apple’s opposition against the “IPHONE” mark in Class 18

On October 18, 2002, Apple Inc. applied to register the “IPHONE” mark in Class 9 (computer hardware, computer software etc.) in China, which was approved on November 21, 2013.

On September 29, 2007, a local Chinese company Xin Tong Tian Di Company (“XTTD“) applied to register the “IPHONE” mark in Class 18 (leather, wallet, purse etc.) in China (“Disputed Trademark“).

After China Trademark Office (“CTO“) preliminarily approved the registration of the Disputed Trademark, Apple filed an opposition against it but the opposition was rejected by the CTO in 2012.

Then Apple applied for re-examination of the Disputed Trademark to China Trademark Review and Adjudication Board (“TRAB“). But the TRAB sustained the CTO’s decision on December 16, 2013.

Arguments of Apple

Apple argued that its “IPHONE” mark registered in Class 9 has gained high popularity and distinctiveness in China and therefore should be deemed as well-known trademark.

Since its launch of the IPHONE on June 29, 2007, it has launched 9 generations of IPHONE products and has been officially selling the IPHONE products in Mainland China since October 2009.

Based on the above, Apple applied to protect its “IPHONE” mark as a well-known trademark in China, which means, it should be protected in all Classes in China even if it has not been registered in a particular Class.

Opinion of the TRAB

The TRAB decided that Apple cannot prove that its trademark had become well-known in China before the application of the Disputed Trademark because its use of the trademark which can be supported by evidences submitted by Apple was all dated after the application date of the Disputed Trademark.

Despite that Apple’s “IPHONE” mark has high popularity on cell phones and relevant products, the current evidences were not sufficient to determine that the “IPHONE” mark had become a well-known trademark in China. It is not likely that the general public in China will associate the Disputed Trademark with Apple Inc.

Decision of the court

Apple appealed the TRAB decision to Beijing No. 1 Intermediate Court and then to Beijing Higher Court. Both courts decided that the “IPHONE” mark was not a well-known trademark before the application date of the Disputed Trademark because the IPHONE was first launched in June 2007 and was only officially sold in Mainland China in October 2009.

At the time of the application of the Disputed Trademark (September 29, 2007), the “IPHONE” mark was not well-known in China and therefore it cannot block the registration of the Disputed Trademark.

Accordingly, Beijing Higher Court finally rejected Apple’s appeal and affirmed the registration of the Disputed Trademark.

Comments from China Filing

Chinese laws do provide special protection to well-known trademarks. However, being recognized as a well-known trademark is not retrospective. Even if a trademark becomes well-known after massive use and promotion, at its early stage when it is not that “famous”, it cannot prevent others from registering the identical or similar trademark on irrelevant Classes (goods or services).

Big companies such as Apple should consider to register its major trademarks in all 45 Classes in China before its launch in China. The registration costs for all 45 Classes may seem to be very high, but it will save a lot of litigation costs in the future and can eventually protect its trademark in all Classes in China.