Through our Helpdesk Twitter feed we regularly, almost constantly, receive tweets concerning Apple’s involvement in intellectual property rights disputes. This is not big news, almost everyone has heard about Apple and Proview’s legal saga and the millions it eventually cost Apple. What is less well-documented however, are the lessons to be learnt from the situation. It is our wish that Apple learnt the hard way so smaller businesses don’t have to!
1. Register your trade mark EARLY!
This might be a tad unfair on Apple given that Proview had registered the trade mark before Apple had even manufactured an iPad, Apple then sought to buy the rights to the name. It does allude to a common practice in China though; that of European businesses’ trade marks being registered pre-emptively for the sole purpose of selling them back at an inflated price. Put simply, if you don’t register your trade mark in China first, someone else will.
2. If you buy a trade mark, make sure the seller actually owns it
Do your due diligence! Apple bought the rights to use of the iPad trade mark name in Asia (including Mainland China) from Proview Taiwan but Proview Shenzhen actually owned the rights to the trade mark in Mainland China. As part of your due diligence, you can check the register of trade marks online; this includes details of who owns them. Our How to Conduct a Trade Mark Search guide can help you with this!
3. Use a lawyer who has experience of practicing Chinese law
Again, this may sound simple but the situation mentioned above in 2 is far less likely to happen if your lawyer has professional experience of China. It is also extremely important that you ensure the Chinese translations of all your legal documents are accurate. This is true for registering intellectual property as well as making contracts. A Chinese court is likely to prioritise the Chinese (specifically, Mandarin) language documents over English or other language versions so investing resources in a quality translation is worthwhile.
4. Mainland China is not the same as Hong Kong, Taiwan or Macau
Not just culturally or historically, but legally as well. Mainland China is a different jurisdiction from the others; if you register rights in Hong Kong or Taiwan don’t assume protection is extended to Mainland China. Apple didn’t assume this but did sign agreements with a Taiwanese entity for Mainland rights. The message here is not that this is wrong but rather that enforcement across jurisdictions can be difficult and could cause you significant problems.
5. Register your trade mark EARLY!
Yes, this is the same as lesson 1 but it is so very important! One thing that did not happen in the Proview saga was Apple iPads being blocked from shipment out of China. If someone else registers your trade mark in China and you have products produced there, it is not unheard of for customs to detain the exports due to infringement of the Mainland-registered trade mark. Injury added to insult.
What lessons would you recommend?