Apple’s Mexican trademark standoff

Posted on Nov 4 2012 - 2:53pm by Phalgun Shenoy

Apple is widely known for winning most of the legal battles it is involved in, but sometimes it loses too. This time the case is related to another company called iFone in Mexico, and Apple has lost the case. The name iFone sounds very similar to Apple’s iPhone.

A court in Mexico has ruled that the name iPhone is too similar phonetically to a Mexican brand iFone, and has denied Apple’s appeal to cancel the Mexican company’s trademark rights.

The news has widely spread on the internet that Apple won’t be able to sell its iPhone product in Mexico anymore, but seems like all those reports are not true and the defeat in this legal battle does not affect the Cupertino based technology giant’s ability to sell its bestselling product in the country, and the reason behind this is connected to how the trademark system works in the legal system. Below is an excerpt from The Verge’s article which explains the trademark system in detail:

“As you’d expect, companies like Apple file to protect ultra valuable trademarks like “iPhone” in every class they can come up with an argument for, since it protects against infringement and brand dilution. That’s where iFone comes in — it has a single Mexican trademark on the word “iFone” in Class 38, which covers telecommunication services. Apple runs a few of those, like iMessage and FaceTime, and indeed, it has a Class 38 US trademark on “iPhone.”

Apple already owns two iPhone trademarks in Mexico in Class 9 and Class 28, which covers electronic game devices. But in 2009, Apple’s lawyers decided iFone’s Mexican Class 38 mark wasn’t being actively used, and they filed a lawsuit to try and get it canceled so they could register their own pending Class 38 mark on “iPhone.” iFone obviously disagreed and convinced the Mexican courts that they were still using the mark in commerce, which is where today’s ruling comes from — Apple lost another round of appeals trying to cancel the iFone mark in Class 38.”

To give you a bit of background info about the iFone trademark, it belongs to a small call center company which registered the name in 2003, which is about four years prior to the launch of first iPhone product. As noted in the excerpt above, Apple filed a suit again the company in 2009 in order stop it from using the iFone brand.

Apple failed the legal battle to obtain the iFone name after the first-generation iPhone debuted. iFone currently sells communications systems and services, including virtual office services, IP-based telephony, and software for switching systems.

It is really amusing to know the stories behind Apple’s trademarks. When the company introduced the first iPhone device in 2007, it did not own the trademark. After the launch of device, Cisco (original owner of iPhone trademark) sued Apple for trademark infringement, however, the two companies reached a settlement on trademark usage after a month.

Do let us know your thoughts in the comment section below.

Source: TheVerge 

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