IPAD, EPAD and Apple’s Intellectual Property battles in China

Alexia Marinos, Senior Associate, Gadens Lawyers, Sydney

China, the fastest growing major economy in the world has acceded to the major international conventions that protect intellectual property rights.

Since joining the World Trade Organization (WTO) in 2001, China has strengthened its legal framework and amended its intellectual property rights laws and regulations to comply with the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

However, despite stronger statutory protection, China, like other countries, continues to be a haven for counterfeiters and pirates. Apple, the well known US tech company, is currently embroiled in several legal battles involving its intellectual property in the Chinese market.

Ownership Dispute for iPad Trade Mark In China

A company known as Proview International Holdings Ltd, registered the trade mark for iPad in China in 2001.  In December 2011, a court in Shenzhen, China rejected Apple’s claims that it owns the iPad trade mark finding that Proview is the owner of the iPad trade mark. Apple appealed the decision, which was being heard on 2 March 2012.

If the court finds that Apple has infringed the trade mark rights of Proview, sales of Apple’s iconic tablet in China may be banned.

A Proview spokesperson said that the company is planning to commence legal action against Apple in the United States for, amongst other things, setting up a fake company to purchase the rights to the iPad trade marks from Proview in the USA for US$55,000.  Proview claims that it did not transfer the rights to the iPad trade mark in China.

Apple contends it bought the trademarks in 2009 from Proview but Proview has argued the rights were never formally transferred, and has further responded by filing its own lawsuits and complaints, requesting the Chinese government stop all iPad sales in the country.

Apple’s legal team argue that Proview which is nearly bankrupt has no product, no markets, no customers or suppliers and that a ruling against Apple would harm consumer interests in China. Interestingly, the iPad dominates the tablet PC market with a 76 percent market share in China.

A spokesperson for Proview has suggested that Apple should have paid US$400 million for the iPad trade mark. Other Chinese consumers have suggested that Apple rename its tablet for the Chinese market to avoid further legal action.

iPad vs EPAD

In February 2012, Apple filed a complaint in the Chinese Trade Marks Office demanding that Ebox, a local Chinese luggage vendor, cease using the trade mark Epad in relation to its laptop luggage cases because it closely resembles the iPad name. Ebox applied for the Epad trade mark in China in 2010. Ebox has no plans to use the trade mark for electronics or tablet devices.

Ebox has opposed Apple’s complaint. Ebox’s spokeswoman said that “The iPad trade mark is not Apple’s so now they want to take ours ”.

Key Considerations

These cases remind us of how important it is to register your trade marks and other forms of intellectual property, such as patents and designs, in jurisdictions in which you wish to use them as soon as possible. Companies should adopt defensive intellectual property strategies to better protect their intellectual property.

With mechanisms such as the Madrid Protocol and the Patent Cooperation Treaty, whereby Australian companies and individuals can file a single application through IP Australia in more than 84 different countries to protect their intellectual property in those countries, it has never been a better time for companies to assess their intellectual property assets and ensure that they are adequately protected in Australia and worldwide.  Registered intellectual property rights are very powerful. If you would like further information about international intellectual property or protecting your rights in Australia, please contact Alexia Marinos, Senior Associate and Registered Trade Marks Attorney of Gadens Lawyers.
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This update does not constitute legal advice and should not be relied upon as such. It is intended only to provide a summary and general overview on matters of interest and it is not intended to be comprehensive. You should seek legal or other professional advice before acting or relying on any of the content.