(By You Yunting) According to media reports, Apple Inc. (“Apple”) has filed for “iWatch” trademark in several countries and regions, including: Japan, Mexico, Russia and Taiwan. Searching the trademark database in mainland China and Taiwan, the author discovered that Apple filed its iWatch trademark in Taiwan in June 2013.As for the trademark application in mainland China, because it takes a longer period of time for trademark application to be recorded on China Trademark Office’s website, we could only check the information concerning applications made several months ago. Therefore, if Apple filed the application in early June, then we would have no way to confirm it right now. Furthermore, we have found no records regarding Apple’s iWatch trademark application in China. The following are information of Apple’s “iWatch” trademark application in Taiwan:

As a trademark attorney in China, the author finds Apple’s “iWatch” trademark application to be very interesting. The following are some of the unusual points:

I. As an American company, Apple chose to first file the trademark application in Jamaica, then almost half a year after that, it begin to file  in other countries. The main purpose for Apple’s choice was to protect its own trade secret. According to Article 4 of the Paris Convention for the Protection of Industrial Property, any one or any rightful successor of the industrial property protection alliance may enjoy priority of the trademark if it filed for the trademark in one of the alliance member’s country, then within 6 months, file for trademark of the same product in another country. Apple chose the last day before the 6 month deadline to file its application in other countries.

At the same time, according to a preliminary search conducted by the author through Google, there is no official trademark database provided online by the Jamaican authority. If Jamaica really does not have a trademark retrieval website, then that could explain the true intension of Apple to file its first iWatch trademark there. As more and more competitors and reporters intensely scrutinize over  Apple’s patent or trademark application, much information about its technology and product has been unwilling leaked to the general public through these channels. For this reason, by registering its trademark in a small, inconspicuous country, then through priority right protection, Apple can have its trademark right be protected as early as possible, while delaying the leak of its trade secret as late as possible.

II. Apple chose many products for its Class 9 application. Generally speaking, when a company applies for the trademark in a certain class, it would only choose 10 kinds of products or services. Anything over that limit, the trademark office would charge an extra fee. According to the author’s estimation, Apple chose 124 products and services in its Class 9 application (for the details, please check the appendix). Among the application, we see commonly used products such as computer software, hardware, accessories, telephone, tablet and other IT devices. In addition, we also find non IT products such as sunglasses, dog whistles, radiological equipment of industrial uses, and other products. Such a comprehensive choice of product and service could explain the possible various functions of iWatch. Yet, with regards to the application of non IT products,  it is possible that it is Apple’s strategy to confuse its competitor.

3. How come this time Apple did not use the so-called white glove to apply for the trademark “iWatch”? Previously, when applying for the “iPad” trademark, Apple used an independently registered company, IP Application Development Limited, to register and purchase the iPad trademark worldwide. With this strategy, Apple could preserve the secret of its upcoming iPad products. Furthermore, when purchasing the iPad trademark, because the independently registered company is an unknown company, the cost of the trademark would be much lower than if made by Apple directly.

However, Apple did make a mistake when it purchased the iPad trademark in mainland China, which caused the company to pay $ 60 million U.S. dollar. However, at least outside of China, iPad trademarks were successfully purchased. But the same strategy could not be implemented twice, since the iBrand strategy of Apple has become such a colossal success. There is now a high possibility that the strategy to use a small, unknown company to purchase trademarks would fail. For this reason, this time Apple chose to first applied the trademark in a relative small, inconspicuous country, then claim its priority right through the Paris Convention.

But for Apple, it will face an even bigger challenge concerning the “iWatch” trademark, because in many countries and regions such as the EU, there are already companies that applied for the trademark in Class 9 back in 2008. For the prospect of iWatch application in mainland China, because “watch” has an ordinary meaning of a portable timepiece, it will face certain difficulties to register in Class 14. Apple will need to use some unconventional procedures to obtain this trademark. Ok, the author would like to stop here, and I will resume the discussion over this issue in tomorrow’s post.

Lawyer Contacts

You Yunting：86-21-52134918  youyunting@debund.com/yytbest@gmail.com

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