The Beijing Municipal High People's Court recently confirmed that the trade mark IPHONE would remain registered in China, in relation to class 18 leather goods, in the name of Xintong Tiandi Technology, despite appeals from Apple.

The Beijing based organisation, Xintong Tiandi Technology, has sold leather goods bearing the mark IPHONE since 2007 on the Chinese mainland. This use began shortly after Apple announced their new product, of the same name, in the United States. Whist the goods covered by the registration and use are not core for the tech giant, the dilution of the brand is of utmost significance.

The issues faced here by Apple, and indeed western business looking to expand into the rich Chinese market generally, are by no means new. As has been previously reported, the first to file system in China, which allows small businesses and individuals to register trade marks affiliated with overseas businesses, poses a real issue for established brands looking to enter the market.

There are certainly signs of change, a source of cautious optimism for western brand owners, but the present decision reasserts the need for vigilance in the region. The approach taken to brand protection in relation to well known brands in much of the western world simply cannot be mirrored in China.

The take home message for brand owners then: when considering trade mark filing strategies, it is prudent to cast the net wide both in terms of scope (e.g. defensive filings for accessories, spare parts and peripherals) and extent (e.g. beyond presently consumer-facing territories) but also areas of manufacture and IP abuse hotspots. As a market vital for so many industries, a safe-than-sorry approach may well be advisable.

It has been reported that Apple will appeal.