Tuesday, 20 December 2011
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 .…
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