Apple's trademark loss highlights difficulties of protecting intellectual property overseas writes FBCMB's David Preece.
The news tech giant Apple had lost a major trademark case in China serves to highlight the difficulties that Western businesses can face when trying to protect their IP in overseas markets. Here David Preece, of FBC Manby Bowdler’s Commercial team, explains what businesses need to consider to best protect themselves.
Apple is one the largest, most well-known and most valuable brands on the planet. Its products are not only known and recognised the world over, but its technical innovation paired with minimalistic design mean that the company enjoys strong brand loyalty. It isn’t, however, invincible and as this morning’s news that it had lost a significant trademark case in China demonstrates, there are certain markets in which even global greats struggle to protect their IP.
In the case of Apple, the firm that they were trying to prevent from using the name ‘iPhone’ in fact manufactures handbags and other leather goods (including mobile phone cases!) and some might argue that it is therefore unlikely to damage the brand value of the iconic mobile phone of the same name.
Be that as it may, the journey that Apple has gone through to reach this point highlights the less than transparent nature of some overseas legal and trademark systems. Consider the facts: Apple filed a trademark bid for the name iPhone in 2002, but it was not approved until 2013. In the meantime, Xintong Tiandi (against which they had brought the case) trademarked "IPHONE" for leather products in China in 2010 following an initial application in 2007!
Incredibly, the Chinese authorities ruled that Apple could not prove it was a well-known brand in China before Xintong Tiandi filed its own trademark application in 2007!
China is a notoriously difficult market for Western businesses. Chinese manufacturers will often ignore IP and simply manufacture what they want, whilst as we have seen today, the authorities do little to prevent this.
It’s all too easy to laugh this off as being simply ridiculous (although I imagine the great and the good of Apple are doing anything but laugh today), but it serves as a high profile reminder of why, regardless of your brand’s size or global stature, you should always seek proper legal advice if it’s likely to become necessary to protect your IP in overseas markets.
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