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Lehman, Lee & Xu - China Trademark in the news

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In the News

Enter the Snow Leopard: Apple's Next China Trademark Dispute?

Not so fast. Before you get too excited, this trademark infringement case is nothing like the iPad dispute, and I doubt that Apple's IP folks are freaking out just yet.

The details:

A company based in Jiangsu Province is suing Apple Inc, claiming that the latter's Snow Leopard operating system has the same Chinese name as its registered trademark.The Jiangsu Xuebao Consumer Goods Company is seeking 500,000 yuan (US$78,759) compensation and a public apology. Tong Yu, the company's chairman, said he registered 42 Xuebao trademarks under different categories since 1994. Xuebao means snow leopard in English.

Tong said the company had developed a series of computer-related products under the trademark and accused Apple of making profits from its reputation in China.Tong told the Modern Express newspaper that Apple had applied for the Snow Leopard trademark in China in 2008 but had been rejected.

The Jiangsu company said it had evidence of 104 trademark infringements by Apple. Four other companies, including two Shanghai companies, are also being sued for promoting and selling the Snow Leopard operating system.The case is to be heard by the Pudong New Area People's Court in Shanghai next Tuesday. (Shanghai Daily)

Is it time to panic? Hardly. First, I did take a quick look at the trademarks database, and yes, Xuebao does indeed have a lot of registrations, including in Class 9 for a variety of electrical goods. Class 9 also includes software, although I did not pore over all of the marks to see whether Xuebao specifically had coverage for software. I doubt it, but it's possible. If anyone wants to take the time and make sure, go for it.

Second, Xuebao might have a case if its coverage matches up with Apple's usage. If it's coverage includes software, obviously, then Apple would have a problem using the "Snow Leopard" mark on its operating system. We don't know if Apple did in fact attempt to register the mark in 2008 (makes sense, though) and, if that application was rejected, what mark(s) were obstacles. If Apple had a possible problem with the mark that was determined back in 2008, however, I would think that they would have either attempted to purchase the mark in question or otherwise clear the registry. Seems quite odd that they would just sit on a problem like this hoping that it would go away; this makes me strongly doubt Xuebao's claim, at least until I learn otherwise.

Third, Xuebao can argue that even if its coverage does not include software, it should be entitled to protection against Apple's products in Class 9 because it (Xuebao) is well known. I have no idea whether this argument is feasible or not — I've never heard of Xuebao before and don't live in Jiangsu.

I'm sure everyone wants to rush to judgment on this and immediately determine who is the "Good Guy" and who is the "Bad Guy" in this case. That might be a little complicated. This is not a trademark squatting case. Xuebao began registering these marks in 1994, and Apple's OS was launched in August 2009. Nor are Xuebao and Apple locked in a commercial dispute (as was the case with Proview). As far as I know, there is no connection between the two companies.

On the other hand, why is Xuebao going after Apple when there are quite a few other companies that have registered "Xuebao" marks (in both Chinese characters and pinyin) and/or using such marks? We don't know for sure, but certainly Apple qualifies as a "deep pocket," and the Proview case, which had already begun when Xuebao filed their infringement complaint, might have given them some ideas.

Ultimately, this is a fairly low-level case compared to the Proview mess. We're talking here about a complaint that specified RMB 500,000, and I assume that any possible disruptions with respect to the Snow Leopard OS would not be in the same league as, for example, the cessation of iPad sales. I have no idea what the remediation costs would be if, and this would be the worst-case scenario, Apple had to stop using the "Snow Leopard" name on their OS in China. Perhaps "Red Leopard" would be a good Plan B? Certainly would be easy for the guys back at HQ to remember.

The court hearing is next Tuesday, so we probably will not have to wait too long on this one

Web link:
http://www.businessinsider.com/enter-the-snow-leopard-apples-next-china-trademark-dispute-2012-7

Edward Lehman À×ÂüÂÉʦ
Managing Director ¶­Ê³¤
elehman@lehmanlaw.com

Lehman, Lee & Xu is a top-tier Chinese law firm specializing in corporate, commercial, intellectual property, and labor and employment matters. For further information on any issue discussed in this edition of China Trademark In The News or for all other enquiries, please e-mail us at mail@lehmanlaw.com or visit our website at www.lehmanlaw.com and Mongolia www.lehmanlaw.mn.

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© Lehman, Lee & Xu 2012.
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