Facebook Scores Rare Trademark Victory In China
May 11, 2016 (Mimesis Law) — Apple and Facebook have been involved in separate trade mark infringement proceedings against local businesses in China recently, which left Apple defeated, and Facebook emerging with a rare victory.
Apple lost its case against Xintong Tiandi, a Chinese company using the “iPhone” mark on leather accessories and bags. The mark had been registered by Xintong Tiandi in 2007, the year the first iPhone went on sale in the US. The Beijing Municipal High People’s Court however held that it could not be shown that Apple’s iPhone brand was well known in mainland China until at least 2009 and therefore Xintong Tiandi could continue using the “iphone” mark on its leather goods. The case continues, as Apple plans on taking the case on appeal to the Supreme People’s Court.
Facebook, however, won its case against drinks company Zhongshan Pearl River Drinks for using the mark “face book”, as two separate words, on its food and beverage products. Zhongshan filed its trade mark application in 2011, which was unsuccessfully objected to by Facebook, and subsequently approved and registered by the Chinese Trademark Review and Adjudication Board in 2014. Facebook responded by initiating the latest litigation proceedings in Beijing, which ended in late April without much coverage in the English media, until now. The Beijing Municipal High People’s Court stated that Zhongshan’s registration of the “face book” mark was an obvious and intentional copy of a high-profile trademark, to the detriment of fair competition and in violation of moral principles. The Beijing Court therefore revoked the approval granted to the “face book” mark by the Review and Adjudication Board back in 2014. Surprising, given that Facebook has not been accessible in China since 2009, and Chinese law requires brands to be well known within China to win a case like this, which was Apple’s shortcoming.
Facebook’s win nevertheless serves as a signpost for where Chinese IP infringement and enforcement may be heading. China has undergone a host of trade mark law revisions, and made a concerted effort in enhancing the quality and reliability of its enforcement procedures. Especially so with regard to counterfeit goods and “trade mark squatting”, which involves Chinese entities taking advantage of the first to file regime by registering Western trade marks in the hope of a future, profitable buy-back or out of court settlement with the Western company.
To some, Facebook’s win has something positive in it for well known Western brands, but many have pointed to Mark Zuckerberg’s ongoing wooing of Chinese officials and the Chinese people as a major factor at play in last month’s decision. Either way, the trend in China seems to favour healthy competition and strict enforcement and if one man’s jog through Tiananmen Square, or a strategic placing of Xi Jinping’s Governance of China, or even a fluently Mandarin Q&A session helps to further that trend, then so be it.