Last spring, we discussed Tesla’s problems securing trademark rights in its name in China. See our post here. The moral of the Tesla story was to seek trademark registration in China as early as possible. Now, Apple has lost a trademark battle in China that underscores the importance of the Tesla lesson and gives an additional twist.
In 2002, Apple registered the IPHONE trademark in China for computer hardware and software and mobile telephones. In 2007, Xintong Tiandi, a leather goods maker, sought and obtained registration of the IPHONE trademark for leather goods, including phone cases. Apple, claiming that its IPHONE mark was famous and well known in China, challenged Xintong Tiandi’s IPHONE registration in the China Trade Mark Review and Adjudication Board, where it lost. Apple then took the fight to the courts in China and lost in the lower court. Apple appealed and The Beijing Municipal High People’s Court has ruled against Apple again, stating that Xintong Tiandi registered the IPHONE mark before Apple, thus giving it superior rights, and Apple’s IPHONE trademark was not sufficiently well known in China at the time Xintong Tiandi registered IPHONE for leather goods. As the first user of the mark, Xintong Tiandi had the greatest rights and Apple’s claims failed.