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Latest Trademark Cases that Have Made Headlines
published on 10 Jan 2012
Banane Taipei bag producers indicted for trademark infringement
Prosecutors indicted the producers of the popular “Banane Taipei” canvas tote bag on December 7, 2011 for infringing upon the trademark of the French luxury goods brand Hermes.
The prosecutors deemed the “Banane Taipei” logo similar to the Hermes' horse and carriage logo, while Hermes also alleged that the canvas tote bag included images of the famed Hermes Birkin bag, which also infringes Hermes’ copyright.
The accused owners of Banana International that produces and sells the bag had attempted to register with the TIPO its “Banane Taipei” logo as it is shown below, but their efforts in this regard were unsuccessful.
Banana International has however successfully registered a re-designed trademark that substitutes the horse for a rabbit and removes the horseman, but some believe that the feeling of the well-known brand might still linger in the consumer’s mind by the overall arrangement of the new logo.
Apple’s missteps surrounding iPad trademark dispute in China
On December 5, 2011, the first instance of Shenzen Intermediate People’s Court overruled the “iPad” trademark infringement lawsuit brought by Apple, Inc. against Proview Technology, a Shenzen based company, rejecting Apple’s right to use the trademark “iPad” in China.
Proview Technology (Shenzen) is a subsidiary of Hong-Kong-headquartered Proview International Holdings Limited, which owns subsidiaries in 7 regions across China, Taiwan, the US and the UK. Commencing in 2000, Proview Taipei filed trademark applications for “iPad” for LCD monitors and obtained its registrations in 8 jurisdictions (all outside of China), while in 2001 Proview Shenzen registered “iPad” in China, long before Apple launched its iPad tablet. Apple became aware of the true ownership of the “iPad” trademark in these regions in 2006.
In 2009, Apple reached an assignment agreement with Proview Taipei to transfer the worldwide “iPad” trademark to Apple. Apple paid Proview Taipei ￡35,000 as part of the agreement. Apple believes that the trademark assignment should include the “iPad” trademark right in China because the agreement was based on group dealings and also that Proview Taipei acted on behalf of Proview group. Proview Shenzen challenged Apple’s claims and indicated that Proview Shenzen is the registered right holder of the “iPad” trademark in China for the interested goods. Proview Shenzen also maintained that Proview Taipei plays no part in the Chinese ownership and therefore cannot dispose of the Chinese trademark right of “iPad.”
The Shenzen Intermediate People’s Court favored Proview Shenzen’s argument, and opined that the party who signed the agreement with Apple was Proview Taipei, further adding that Proview Shenzen and Proview Taipei are different and independent judicial entities registered under the laws of China and Taiwan respectively. The Shenzen Intermediate People’s Court further held that since the court did not find any written letter of authorization showing that Proview Shenzen authorized Proview Taipei to assign the “iPad” trademark right in China to Apple, Proview Shenzen is still the legitimate right holder of the “iPad” mark in China, and the agreement between Proview Taipei and Apple has no bearing on this right of Proview Shenzen.
If this shocking result was due to Apple’s inadvertence in clarifying the ownership of the “iPad” trademark in different jurisdictions, Apple’s blunders on the handling of “iPad” trademark in this case should teach a lesson to all trademark right holders.
For any questions relating to this topic, please contact us at cjchen@tsailee.com.tw |