For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Tuesday, 20 December 2011

APPLE UPDATE: You win some, you lose some ...

Apple’s troubles in China increase: Apple does not own the iPad trade mark in China and is being sued for using it. Meanwhile, in America, the International Trade Commission has found that some HTC Android phones infringe an Apple patent and has banned their import as of April 19 2012  

Dealing with the bad news first (Apple’s bad news, someone else’s good news): China has a first-to-file system for trade marks and the IPAD trade mark was registered by Proview Technology (Shenzhen) in China back in 2001.  Proview also registered trade marks for the IPAD name in the EU, China, Mexico, South Korea, Singapore, Indonesia, Thailand and Vietnam in the period 2000 and 2004, with a view to selling a tablet computer.  Its tablet computer was not a success an,d in 2006, Proview Electronics (Taiwan) -- the parent company of Proview Technology (Shenzhen) -- agreed to sell the “global trade mark” to a company called IP Application Development (IPAD) for £35,000. IPAD then transferred the “global trade mark” to Apple.  Apple probably thought all was well until the State Intellectual Property Office (SIPO) in China refused to transfer the two Chinese marks to it last year. 

SIPO rejected Apple’s application for the simple reason that the Chinese trade marks are owned by Proview Technology (Shenzhen), which originally registered them, and not by Proview Electronics (Taiwan).  Despite the deal between Proview Electronics (Taiwan) and IPAD being for the “global trade mark”, Proview Technology (Shenzhen) was not party to the negotiations, the transfer of the Chinese trade marks was never registered at SIPO and no official trade mark transfer agreement was entered into between any parties.  Unless the decision is overturned on appeal, Apple will have no choice but to stump up a hefty price for the trade marks or suffer the indignity of being injuncted from selling iPads in China.  I suspect they will pay more attention to civil law countries’ rules about registering transfers in future .…

And now the good news (Apple’s good news, perhaps bad news for consumers) is that the ITC, having blinked twice (deferring decisions that were due on 6 December 2011 and then 14 December 2011) has now issued its decision banning the importation of Android devices infringing U.S. Patent Nos. 5,946,647.  HTC appear unconcerned by the ITC ban, their spokesperson saying the ‘647 patent is a small UI experience and HTC will completely remove it from all of our phones soon".   The UIexperience is being able to dial a phone number by tapping on that phone number embedded in an email. 

The ITC, which has no power to award damages, granted a transition period until 19 April 2012 during which the ban does not come into effect, and then there is a second transition period until 19 December 2013 in which refurbished handsets can be provided to consumers as replacements under warranty or an insurance contract; but, aside from these minor points, Apple has scored a good victory in preventing HTC phone users dial phone numbers straight from emails. 

This post was written by Tom but posted by Jeremy

5 comments:

Anonymous said...

Ho Ho Ho! You have to laugh when an 'IP-literate' global company makes such a cock up. Did they use some of those low-cost, unqualified, IP-advice companies that Hargreaves is so keen on everyone using? Probably not, but then I've had to deal with the same problem caused by high-priced London patent firms whose academic attorneys don't understand that there is a real-world outside of their P2 revision notes. How these fresh-from uni, never worked in the real world of technology-development companies, graduates are supposed to provide valuable, commercially relevant advice is beyond comprehension. They have learnt their trade from people cut from the same from the same cloth and so their is no advancement through evolution.

For IP transactions, one golden rule is: Chain of Title, Chain of Title, Chain of Title. Could add: "In Each and Every Location, Location, Location".

Ho, Ho, Ho!

Anonymous said...

"The UIexperience is being able to dial a phone number by tapping on that phone number embedded in an email."

Nought wrong with patents for computer-software inventions. Problem appears to be that everyone has forgotten about the need for their to be an 'invention'.

I heard a rumour that Google have a US patent directed to a method for objecting to computer-related inventions by submitting comments on internet blogs. I hope no-one outside of Bognor reads this blog.

A Chinese reader said...

Thanks for letting us know the latest cases about APPLE. Can I correct one error in your post? The office in charge of trade marks in China is not SIPO but a special TM Office. It's a part of the State Administration for Industry and Commerce (SAIC). SAIC is an independent department under China's State Coucil. You might read its introduction at http://www.saic.gov.cn/sbjEnglish/zzjg1_1/ if you like.

Robert Scott Lawrence said...

Ow! That's got to hurt. Hard to believe in a world inundated with experienced international transaction lawyers no one caught that Proview Electronics (Taiwan) was a different entity than Proview Technology (Shenzhen).

Mark said...

Excellent summary here:

http://www.chinalawblog.com/2012/02/apple_v_proview_so_much_to_learn.html

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