The 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.
The cause of this dispute can be traced back 11 years. ProviewTaipei, 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 mainlandChinain 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 theUKseemingly 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 inChinawas not included in the transfer. Proview Shenzhen claims it still owns the iPad trademark right inChinaand 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. The Shenzhen Intermediate People’s Court accepted the case in April 2010. After 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. The 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. Therefore, 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. The 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. The chief judge summarised two key points in this case: first, whether trademark assignment can be established between Proview Shenzhen and IPADL; and second, whether Proview Shenzhen is bound by the trademark assignment contract between Proview Taipei and IPADL. After a five-hour hearing, the court was adjourned.
The chief judge mediated between Apple and Proview Shenzhen at the end of the hearing. The two sides had only attorneys present in the court hearing, who said they would make final decisions after 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.
Author: Stephen Yang
Peksung Intellectual Property Ltd
