Apple vs Proview: A Slice of the Pie
The following is a simplistic and very basic interpretation of what is going on with Apple’s trademark infringement case for the name “iPad” in China. The thoughts and views expressed here are my personal opinions.
What can we learn from the Apple vs Proview ongoing case?
Mmm... smells expensive.
In the early 2000’s Apple hired a company, Proview Taiwan, to purchase the trademarks for several product names in the Asia area, including in mainland China. I am told the agreement between Apple and Proview Taiwan for this work wasn’t well worded and contained some room for interpretation (some have called this sloppy legal work and poor due diligence).
Proview purchased the trademarks for iPad (amongst other names) on behalf of Apple, sold them to Apple and everyone moved on. Fast-forward a few years and pretty much out of the blue (although there has been rumours of this case for some time) an entity called Proview Shenzhen brings to light that they own the iPad trademark in mainland China and Apple is committing trademark infringement by selling iPad’s under that name. Proview Shenzhen takes Apple to court in Shenzhen and wins, paving the way for further trademark infringement cases against Apple all across the country.
The crux of the issue here appears to be that in the original agreement it wasn’t clear who owned the Chinese mainland trademark for the name “iPad”. The trademark infringement win in Shenzhen for Proview allowed the removal of iPads from retail sales outlets there. In my opinion, if Apple want to continue selling iPad’s in China and to stop a further plethora of trademark infringement cases coming their way, they should be considering an ongoing agreement with Proview Shenzhen or attempt to purchase the trademark all out. Apple could fight it on the grounds of a breach of the initial contract but whichever way you slice it, this is going to be quite costly for Apple. Costly in the way that you or I wouldn’t be able to afford in probably a hundred lifetimes! Great timing for the launch of the iPad3 next month, eh?
China uses a first to file system with regards trademarks, so understand that this seems to have nothing to do with the nuances of Chinese trademark law and more to do with an initial breach of contract between Apple and Proview. However, it helps raise questions for businesses interested in entering the ever changing and confusing landscape that is the Chinese Market.
I think no matter how big or small your company is it is always worth being extra careful when bringing your product to the masses in China. Make sure the basics are down before you begin. When you register your trademark in China, make sure you own it. If you are developing new products that may potentially make their way into China, make sure they are trademarked too. If you can’t afford to trademark in a new market such as China or don’t think its viable, then it’s worth to stop and think again.
Our advice would be to seek out a professional legal trademark specialist in China to make sure you have your bases covered and at least to find out who owns what already!
Sent from my iPad
Update 21-2-2012
Watch out for the trademark infringement ruling in Shanghai tomorrow, Wednesday 22-2-12 – The result could mean quite a lot!
Update 21-2-2012
I tried to post this link in my Weibo (twitter ripoff) and it seems that the term ‘Proview’ has been blocked from posts and searches!
Like this article? You might want to check out:
Trademarks in China: How hard can it be?
Fake/Unlicensed Body Shop in Fujian, China
Fake Toni & Guy Salon in Downtown Beijing, China
There is even more to this story. If you dig up the filing in California (or read the summary online) it seems that Apple engaged in some shady practices to purchase the trademarks in China. They formed a fake company whose name initials were I.P.A.D. and then purchased the trademark from Proview under this premise. They never told them what it was really for, and in fact there is an email where they state they will never be in direct competition with Proview (obvious lie). Proview is just as bad, they claim in their Shanghai filing that there was never a deal made, but in the U.S. filing they claim a deal was made but it should be thrown out LOL.
Thanks for that additional info, Jeff. Just goes to show there’s always much more to these situations than meets the eye.
Also, enjoyed looking over your blog, tinturtle.com.
Two things which rtuiigne me the most in the story:First, Apple was certainly aware of the importance of Trademark when they purchased it in 2009. What made them not to buy Chinese rights keeps perplexing me.Next,It was Apple which dragged Proview th court. Was Apple (or its IP department/attorneys) so stupid to drag someone without and before checking their ownership rights/status? This is not easy to grasp. If this were the case, certainly Apple needs to revamp its IP management.I look forward for views on this