(By You Yunting) The author would first like to apologyze, that as mentioned in the previous post “Why Did Apple Filed the First “iWatch” Trademark In Jamaica?”:

“For the prospect of iWatch application in mainland China… the author would like to stop here, and I will resume the discussion over this issue in tomorrow’s post.”

Yet due to work obligations, the author broke his promise. For the make-up, the author took an early raise this morning to continue his analysis on the issue.  First, the author’s conclusion of the issue is: despite the obstacles of iWatch acquisition, it would not prevent Apple from gaining it.

I. Why the first application of iWatch had been refused?

The classes covered by Apple’s application over the trademark “iWatch” mainly included Class 9 of “Computer hardware and software, accessories, telephone” and Class 14 of “Watch, precise timing equipment, jewelry, etc”. The table hereunder is the first application filed by Apple concerning iWatch trademark in the State Trademark Office of China:

Trademark	Class	Product	Applicant	Registered or Not
iWatch	9	Computer and accessories	Hong Kong Qin Yi Company	Not registered, invalid
iWatch	9	Bulletin Board Syetem	Shenzhen Shu Ze Technology	Not registered, in the opposition procedure
iWatch	9	Glasses, sun battery	Beijing Wang Shang Culture	Not registered, in the opposition procedure
iWatch	14	Watch	Hong Kong Sky Era Company	Not registered, invalid
iWatch	14	Watch, Jews	Hong Kong Guo Ji Shi Company	Not registered, invalid
iWatch	14	Watch, etc.	Wuhan Hua An Technology	Not registered, invalid
iWatch	14	Watch, etc.	Hong Kong Xin Mei Shi	Not registered, refused in the review procedure

 As showed from the above table, most applications have been refused; while the few others have been opposed. The main reason for the refusal involves the regulation in Article 11:

“The following signs shall not be registered as trademarks:

(1) signs which consist exclusively of the generic names, designs, or model numbers of the goods in respect of which the trademark is used;

(2) signs which consist exclusively of direct indications of the quality, primary raw material, functions, intended purposes, weight, quantity or other characteristics of goods; or

(3) signs which are devoid of any distinctive character.”

For the iWatch, the “watch” in it refers to the time piece, and for this reason, such an application in Class 14 should be denied due to the above (1) provision. Moreover, computer and its accessories have a major function of timing. For this reason, the application in Class 9 could be regulated by the above (2) and (3).

II. How could Apple gain iWatch trademark?

Although Article 11 of Trademark Law has shut the door to the trademark application, it remains an open window. As provided in its Article 2: logos gaining distinctiveness through use, which is also easy to recognize, could be used as the trademark. If Apple would like to apply iWatch trademark, it shall file the application as following. First, to file the application of iWatch in Class 9 and Class 41, which for sure would be refused half year later. After that, since iWatch will have gained distinctiveness through use, Apple could apply for the review in the Trademark Review and Adjudication Board for the review on the trademark application.

There is a precondition here,the introduction date of this device shall not be earlier than the trademark application date. But it shall be earlier than the expiration of the proving period. If the product is delayed in its launching, then what needs to be done? Because there is no legal limitation to the number of trademark application , in practice, most trademark applicants filed the trademark applications at intervals, and even the first applications are refused, the later one could exist. The key is the continuity , and to let no others squat it. Readers might wonder: will it lead to a high application fees? To the understanding of the author, as compared with the costs coming from a proper brand acquisition, the application fee could be totally neglected.

III. Will the first application of iWatching influence the application of iWatch?

 According to Xinjing News, a Taiwan company had first filed the application of iWatching in Class 9, and once Apple applied for iWatch, it could be denied because of its similarity. For this point, the author thinks it shall be discussed. Taiwan Han Fu did apply the trademark iWatching on June 21^st 2009, but that first application is not necessarily the same with the Apple’s application.

The biggest conflict of the trademark comes from the possible confusion over the origin of the service and the product. Although iWatching and iWatch are judged similar to each other from the literal prospect, they are unlikely to be confused. For the word “iWatching”, for the “ing” part, it means the present acting, and is more easily to be taken as a verb. But Apple’s iWatch is obviously more focusing on describing the timing devices. At the same time, Han Fu Company’s application is more focused on the service and product of fire protection devices, including the supervisor and alarm devices. Therefore, the services and products covered by its application are different from those applied by Apple in the trademark application, and hence, less likely to be confused.

Lawyer Contacts

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

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