Apple Loses Trademark Claim Against iFone in Mexico

sfcrazy writes "Apple is having trouble in Mexico right before the holiday season. The company has lost rights to the name iPhone in the country, as it was already owned by a Mexican telecom company called iFone (Google translation of Spanish original). iFone registered its trademark in 2003, four years before Apple iPhone was launched. In 2009, Apple filed a complaint with the Mexican Industrial Property Institute demanding that iFone stop using is name because it could confuse users. That claim was since denied, and iFone is looking to turn the tables."

Comments

Re:Didn't Do The Research

[DragonWriter]

Has there ever been a trademark infringement lawsuit, where the defendants had both been using the trademark in the market and had originated it before the plaintiffs, and where the plaintiffs won the case?

I seem to recall that in the late 60's some 'popular beat combo' going by the strange name of 'The Beatles' had a music production company called 'Apple'.

True.

They tried to sue an upstart popular IT company of the same name and lost because that IT company was not in the music business...

False, they didn't lose. The case was settled. As you allude to in the next sentence. Settling a case means that no one has "won" or "lost", because it was never decided.

In fact, as part of the settlement they each signed an agreement that they would not use their trademarks in competing businesses.

That's a popular characterization of the agreement, though the actual details were (as is usually the case with legal agreements) considerably more complicated.

If you research the followup on that, where Apple music inc. tried to enforce that agreement years later when iTunes launched, I think you will find your first example of how this can happen.

The Beatles' Music company (Apple Corp., not Apple music inc.) didn't lose (at trial) based on the trademark itself, they lost based on the specific terms of the settlement agreement of the earlier suit, in which Apple Computer (now Apple, Inc.) was granted specific rights to use and control the use of the Apple Computer trademarks in the area of music-as-content on "goods and services ... (such as software, hardware or broadcasting services) used to reproduce, run, play or otherwise deliver such content provided it shall not use or authorize others to use the Apple Computer Marks on or in connection with physical media delivering pre-recorded content ... (such as a compact disc of the Rolling Stones music)." So its not really an example of the phenomenon at issue.