Apple loses its IPAD mark

On December 5 2011 the Intermediate People’s Court in Shenzhen, Guangdong province, rejected Apple’s claim of ownership of the IPAD trademark, holding that Proview Technology Shenzhen Company Limited had a prior registration for the mark. Proview Technology Shenzhen is said to be the largest development and manufacturing centre of Proview International Holdings Ltd, a Taiwanese enterprise which has been listed on the Hong Kong Stock Exchange Market since 1997.
From 2000 to 2004 Proview International Holdings, a flatscreen contract manufacturer, attempted to sell its own line of tablet computers worldwide and secured registration for the IPAD mark in various jurisdictions, including the European Union, Mexico, South Korea, Singapore and Indonesia. In 2001, long before the launch of Apple’s iPad tablet in China, Proview Technology Shenzhen registered the IPAD mark in China.
In 2006 another Proview company, Proview Electronics Taiwan, reached an agreement to sell the IPAD mark as a global trademark to IP Application Development for the amount of $55,104. IP Application Development functioned as Apple’s secret agent in arranging the negotiations. However, the parties failed to reach an agreement on whether China should be included in the contract. 
Subsequent to the fallen negotiations, Apple filed a trademark application for IPAD in China. The application was rejected by the Chinese Trademark Office due to Proview Technology Shenzhen's prior registration. In early 2010 Apple filed a lawsuit against Proview Technology Shenzhen for infringement of its IPAD mark in China. Apple argued that its earlier agreement with Proview Electronics Taiwan should be binding on Proview Technology Shenzhen and, therefore, the latter's registration for the IPAD mark should have been transferred to Apple. Apple requested that the Chinese court declare that it was the rightful owner of the IPAD mark in China. However, Apple's claim was rejected by the court. Apple still has the opportunity to file an appeal.

Meanwhile, Proview Technology Shenzhen is taking legal action against Apple for trademark infringement in China, as Apple begun selling its iPad tablets in China in early 2010. A claim of approximately $1.6 billion is being made against Apple for the alleged infringement. Proview Technology Shenzhen has initiated two proceedings before the courts in Shenzhen and Huizhou in an effort to stop Apple from selling its iPad tablets in these two cities. The two cases were scheduled to be heard in late December 2011 and early January 2012. It appears that Proview Technology Shenzhen will seek to expand legal proceedings across mainland China should it succeed in these two cases, which would potentially prevent Apple from selling its iPad tablets in China.

Andrea Fong and Dorie Wong, Wilkinson & Grist, Hong Kong

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