HIGHLIGHTS: Apple recently applied trademark registration for its “iMessage” in U.S., and no doubt such registration will also be conducted in China soon. Bridge IP Commentary will analyse the prospect for such registration in China and also introduce the related local trademark laws and regulations.
It is reported that Apple (NSDQ: AAPL) filed three different trademark applications for “iMessage” with the USPTO recently. iMessage is Apple’s newly developed instant messaging software basing on mobile internet devices.
For China is one of the key markets of Apple, the trademark application is expected to conduct in China, even such application should have been processed. We will analyse the prospect of iMessage application in China, and the laws and regulations will also be introduced.
I. Apple may claim right of priority for its application. According to our trademark retrieval search result on official website of the USPTO, Apple’s “iMessage” applications are in class 9, 38 and 42, covering software, communications, text transmission and other aspects.
Both U.S. and China are the contracting party of “Paris Convention for the Protection of Industrial Property”, therefore Apple may enjoy up to 6 months’ priority in China when applying in same class. That means as long as Apple submits “iMessage” trademark application in the coming six months in China, other applications for similar trademarks later than the date of Apple’s application in U.S. shall be excluded.
II. The legal obstacles Apple may encounter on “iMessage” trademark registration in China
1. The word “iMessage” may be identified as a “generic name”. As regulated in Trademark Law of China, the generic name reflecting product nature or being widely used in its industry cannot be registered as a trademark, unless it acquires distinctive through use. For this reason, the trademark “iMessage”, the name of the instant message software, may be identified as “generic name” and rejected by China Trademark Office (the “CTMO”).
2. “iMessage” may be identified as similar to earlier applications. According to our search on CTMO’s official website, there’s already prior application of similar trademark “IMASSAGE” in class 9, 38 and 42, thus “iMessage” may be refused for its slight difference.
Of course, the meaning of MASSAGE is different from Message, which is in favor to Apple. What’s more, however, unlike the trademark retrieval in U.S., the data of recent 6 months’ application is unavailable from CTMO’s database, therefore there may be the same or similar application in China before Apple’s application in U.S.
III. How can iMessage get registrred?
For the risk of “generic name”, we retrieved a successful registration case of “Message” in class 9, though it once refused by CTMO and approved after review. We estimate that the application of “Message” was first rejected for “generic name”, and approved in consideration of the applicant’s evidence of distinctiveness in the review procedure. Given the huge popularity of Apple products, even its application was rejected, Apple could also pass the approval through such method.
Apple’s application may also be hindered by prior similar applications. For “iMessage” has not been used as trademark, Apple may not raise objection to similar ones, yet it does not necessary lead to the application failure.
Even so, Apple can still find defenses with references to the regulations in China Trademark Law. For example, Apple can claim that “iMessage” would not confused with other similar ones for its popularity, moreover, Apple could also investigate similar registered marks, for once the marks are unused for three years, the invalid proceeding for it may initiated.
In a word, Apple could get iMessage registered in China with proper application of laws, even it faces difficulties.
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Copyright reserved by Mr. You Yunting
Editor-in-Chief of Bridge IP Commentary
Partner & Attorney-at-law of Shanghai DeBund Law Offices
Email: Bridge@chinaiplawyer.com, Tel: 8621-5213-4900,
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