Beijing Municipal High People's Court rejected Apple's legal appeal, upholding the mark as registered by Beijing-based leather goods maker Xintong Tiandi Technology, which means that Apple is not entitled to use "IPHONE" trademark exclusively in China.
Apple has submitted an application for trademark “IPHONE” in China in 2002. And this trademark registration was in Trademark Class 9 only, covering computer hardware and computer software. Xintong Tiandi Technology (Beijing) Co., Ltd., which sells handbags, mobile phone cases and other leather goods, applied for “IPHONE” in Class 18 for leather products in 2007.
Apple at first raised an objection to CTMO but being denied. Then Apple appealed to Trademark Review and Adjudication Board (TRAB) in 2013, Beijing No. 1 Intermediate People’s Court in 2014 and Beijing Municipal High People's Court in 2016 but received rejection.
Apple’s chief argument in the trademark case was that “IPHONE” is a well-known trademark in China, and therefore any third-party registration – regardless of the product or service – should be invalidated. However, Apple first announced the iPhone in public on January 9, 2007 and the first iPhone did not arrive in China until October 30, 2009. Besides, the evidence submitted by Apple could not show that “IPHONE” is widely known by public before 2007 in which Xintong Tiandi Technology registered the same trademark on its products. Therefore, both TRAB and the courts rejected Apple’s argument that “IPHONE” is a well-known trademark in China before 2007.
Apple has vowed to take the issue to China's Supreme People's Court. "We intend to request a retrial with the Supreme People's Court and will continue to vigorously protect our trademark rights.”, said a spokesman for the firm.
What this case tells us is that, if you want to protect your trademark in China, you absolutely must register it in China. This is because trying to prove a trademark is well-known is never easy in China. There are two conditions should be fullfilled. First, the mark must be known to the general public, not to a restricted group of experts. Second, the mark must be well known within the territory of China. The situation outside China is not relevant.
Besides, if you don’t want to see your trademark on some random products in China, then submit a trademark application to cover more products than what you will be selling. Starbucks is a good example with this “offensive” strategy. It files trademark applications in all 45 classes of goods and services.