Trademark Infringement and China Exports

November 2, 2012

If anyone can remember back to the Apple vs. Proview dispute over the iPad trademark (oh no, not that again), there was an unresolved dispute floating around about the ability of Proview to stop exports of the iPad manufactured in China by going to Customs. Some folks said it was possible, others said no. I was closest to the “no” camp, although I probably, and typically, hedged my bets rhetorically. Well, here’s some new food for thought on this point of law.

The law firm King & Wood, which puts out a great newsblogletter called “China Law Insight” has an excellent article on this issue entitled China’s OEM’s Manufacturing Solely for Export receive Supreme People’s Court’s Guidance on what Constitutes Trademark “Use,” which includes a discussion of a recent on point Supreme Court case.

Some of the discussion is technical, so I’ll let true believers read the original post. The upshot is that although this is still a grey area under Chinese law, in that the Trademark Law itself is silent on the specific point, the recent SPC case did side with a theory that as long as the products have not been introduced into the China stream of commerce, then the function of the trademark has not been realized, and there is no infringement.

Makes sense to me in some ways, although I wonder how broad that opinion is. I can envision other situations where trademarks never enter the stream of commerce and yet are clear examples of domestic infringement. What about, for example, non-profit activities?

In terms of the Apple vs. Proview case, it seems that the SPC, on the narrow issue of blocking iPad exports, may very well have found in favor of Apple.

I’m glad that’s been cleared up. Sort of.