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Apple Loses Trademark Claim Against iFone in Mexico

Posted by Soulskill on from the still-working-on-the-i-time-machine dept.

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."

46 of 192 comments (clear)

  1. Watch... by Anonymous Coward · · Score: 5, Interesting

    ...as Samsung quickly buys out iFone.

    For "defensive IP," of course.

  2. Didn't Do The Research by TheSpoom · · Score: 5, Insightful

    Apple's lawyers either didn't do the research here, or are arrogant to the point of being harmful to their interests.

    --
    It's better to vote for what you want and not get it than to vote for what you don't want and get it.
    - E. Debs
    1. Re:Didn't Do The Research by Anonymous Coward · · Score: 5, Insightful

      Given (or especially since) it's Apple, why not both?

    2. Re:Didn't Do The Research by sd4f · · Score: 4, Informative

      It's not arrogance, it's just the modus operandi of the adversarial legal system, the lawyers will latch on to any small detail, or whatever in the hopes of making a successful case, no matter how compelling the oppositions evidence is.

    3. Re:Didn't Do The Research by Anonymous Coward · · Score: 5, Interesting

      When it comes to Apple, never attribute to incompetence what can be better explained by malice.

    4. Re:Didn't Do The Research by ByOhTek · · Score: 5, Funny

      Ahh, you seem to think they are mutually exclusive.

      You've obviously never met my ex-girlfriend...

      --
      Self proclaimed typo king, and inventor of the bear destroying coffee table (patent not pending).
    5. Re:Didn't Do The Research by TheSpoom · · Score: 2

      Great. I have a question: 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 sincerely doubt it.

      --
      It's better to vote for what you want and not get it than to vote for what you don't want and get it.
      - E. Debs
    6. Re:Didn't Do The Research by bhagwad · · Score: 4, Insightful

      Breathtakingly arrogant. I wonder what possible reasons they could have given to the judge to demand that a company which had previously registered a trademark should take it down because they graced the market by introducing a phone with a similar name.

      I'm not surprise that Apple lost. I'm stunned that they litigated in the first place. Looks like the tables turned on them since they have now lost the rights to "iPhone" entirely. I'm betting that this was not what they expected.

    7. Re:Didn't Do The Research by bhagwad · · Score: 2

      I like Google. But if they sued someone over a trademark that was already in use before their own product, I would call them dicks as well. To my knowledge this hasn't happened - but I'm open to correction.

      Suing someone in this way takes evil to a whole new level.

    8. Re:Didn't Do The Research by TheGratefulNet · · Score: 4, Interesting

      I worked at cisco in the early 90's and I remember a time when we had a corp lawyer come in and give us some guidance on what to do about patents and how this should affect us, the coders.

      their answer: don't look, just code! if you look and find, you are guilty if you continue along, but if you never knew about such and such, you were told to stop but not found guilty.

      we were surprised but this was the 'high powered lawyer' telling us the official cisco line, back then (back when it was all of 3 buildings up in menlo park.)

      maybe apple is doing the same; not fully researching and then hoping they can get a 'well, we TRIED but we might have missed a few; but we meant well' ruling.

      --

      --
      "It is now safe to switch off your computer."
    9. Re:Didn't Do The Research by EasyTarget · · Score: 5, Interesting

      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'.

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

      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.

      --
      "Oops, I always forget the purpose of competition is to divide people into winners and losers." - Hobbes
    10. Re:Didn't Do The Research by gedeco · · Score: 2, Funny

      I cannot wait until Apple claims the rights to the word iDIOT....

    11. Re:Didn't Do The Research by poetmatt · · Score: 4, Insightful

      It's not the first or the last time such a situation has happened for them. Woz was about the only thing at apple preventing shit like this from happening regularly. What astounds me is people seem to forget apple, microsoft, cisco and oracle have always been this way. It's funny when people act like these companies change from time to time - they don't.

    12. Re:Didn't Do The Research by NatasRevol · · Score: 4, Interesting

      As a follow on, Apple now owns the Beatles Apple Corps logo.

      http://www.patentlyapple.com/patently-apple/2012/10/the-beatles-apple-corps-logo-is-now-a-registered-tm-of-apple.html

      --
      There are two types of people in the world: Those who crave closure
    13. Re:Didn't Do The Research by DragonWriter · · Score: 5, Informative

      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.

    14. Re:Didn't Do The Research by omnichad · · Score: 4, Funny

      And then gets sued by the Illinois Department of Transportation because of brand confusion. I mean, half the state may be mispronouncing their abbreviation already, and introducing a product with that actual name will be confusing to consumers.

    15. Re:Didn't Do The Research by EasyTarget · · Score: 2, Interesting

      Ooh ok, they didn't lose, they just failed to win.
      - My bad, here was I thinking that the purpose of the competition was to win. Shoulda read my own .sig really.

      As to your last paragraph; I'll simply ask if you read what the GtGrandparent post said:

      it's just the modus operandi of the adversarial legal system, the lawyers will latch on to any small detail, or whatever in the hopes of making a successful case, no matter how compelling the oppositions evidence is

      ?

      --
      "Oops, I always forget the purpose of competition is to divide people into winners and losers." - Hobbes
    16. Re:Didn't Do The Research by sjames · · Score: 2

      It can't be that, because Apple sued first claiming that the older trademark infringed upon theirs.

    17. Re:Didn't Do The Research by hairyfeet · · Score: 2

      Sadly I would probably vote for the later, Apple has been sticking the letter "i" in front of common words since the iPod and yes I know iMac came first but outside of networking geeks Mac is an Apple word, not a common everyday noun like pod and pad and phone, so I'm sure their argument came down to "Hey sticking the "i" on front of common words is OUR thing!" while ignoring that just because you are the current 800 pound gorilla doesn't mean you can co-op any copyright anywhere that has the letter "i" in front of a common term.

      But then again this is the same company that tried to sue not one but two companies for daring to have an Apple for a logo even though their Apple logos were nothing like Apple's nor was their businesses in any way comparable to Apple, so why am I not surprised?

      --
      ACs don't waste your time replying, your posts are never seen by me.
    18. Re:Didn't Do The Research by Kyusaku+Natsume · · Score: 4, Informative

      On a weird defense of Apple's lawyers, I must say than here in Mexico you can get legally get away with the murder of your own daughter* if you know the right people, so is not a stretch that they expected that the judge would have behaved accordingly to the customs, not the law. My mom's house was legally stolen by an ex-judge, so I know first hand what kind of scumbags are in our judiciary. I would rater deal with the "justice" of the Sinaloa drug cartel than any cop or judge any given day. Our impunity rate nationwide in murder is 99%

      --
      Mexico: 100% conservative's America now!
    19. Re:Didn't Do The Research by NoSleepDemon · · Score: 4, Funny

      Consider yourself lucky that you're even still alive, I heard she convinced some poor geek from Toronto to take out seven of those ex's!

    20. Re:Didn't Do The Research by rosciol · · Score: 2

      It's the latter. We haven't forgotten that the iPhone trademark was in use in the US when the iPhone was released, have we? Apple released the product anyway with limited attempt at discussion with the trademark holder, Cisco, who subsequently sued (then settled). See Linksys iPhone.

  3. I thought... by Andy+Prough · · Score: 3, Interesting

    ... Steve Jobs was supposed to be a "driven", "detail oriented" guy. Whoops! How do you NOT handle a basic trademark situation in a country as large as Mexico for EIGHT YEARS since you began developing the iPhone? Did he ever hear of one of the richest guys in the world - Carlos Slim - who made his fortune SELLING PHONE SERVICE IN MEXICO???

  4. Maybe by jasper160 · · Score: 5, Funny

    Ay Phone!

    --
    No good deed goes unpunished.
    1. Re:Maybe by Kielistic · · Score: 3, Funny

      iDios mio

  5. Wow, just wow by mcgrew · · Score: 3, Insightful

    Microsoft sure is ballsy... wait, this is Apple?

    I guess what various folks said here are correct, Apple IS the new Microsoft! Suing someone over trademark when thy were using the mark first? That's more MS-like than MS!

    --
    Free Martian Whores!
    1. Re:Wow, just wow by tuppe666 · · Score: 2, Insightful

      Microsoft sure is ballsy... wait, this is Apple?

      I guess what various folks said here are correct, Apple IS the new Microsoft! Suing someone over trademark when thy were using the mark first? That's more MS-like than MS!

      No Microsoft is more bully; bribe; lie; outlast, and still do! Look at how they act in the mobile arena, the new Microsoft is..well Microsoft, Its why they are incredibly weak against the New Giants Apple and Google these tactics are simply ineffective.

      Apple being Apple which is simply a reflection of its CEO like Microsoft is a reflection of its; Companies are like dogs it seems. It is "Narcissistic Entitlement Syndrome" and the result is as always a long prolonged lawsuit over anything Steve Jobs Pissed on, ignoring any real sense of Justice. It has been pretty successful from a legal point of view...not so much from a practical...they haven't destroyed Android, where they have lost all their market share, sown from 23.1% to 14.9% as Android hits 75%.

      Seriously its nothing new ask "Apple Records" http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer or hell look at the whole wikipedia entry on its literation http://en.wikipedia.org/wiki/Apple_Inc._litigation.

    2. Re:Wow, just wow by mcgrew · · Score: 2

      Well, my point (which I very obviously failed at making) was that both companies are evil. I doubt there's a non-evil corporation in existance.

      --
      Free Martian Whores!
  6. Re:Wait a second. by jasper160 · · Score: 2

    I would love to see apple in a Mexican court.

    --
    No good deed goes unpunished.
  7. Confusing much? by Anonymous Coward · · Score: 5, Funny

    "(...) Apple filed a complaint with the Mexican Industrial Property Institute demanding that iFone stop using is name because it could confuse users."

    Confuse users? If they're worried about users getting confused, they should start with refining iOS 6 Maps...

    1. Re:Confusing much? by spyke252 · · Score: 5, Funny

      How do you think Apple's lawyers got to Mexico in the first place? "Siri, get me directions from Cupertino to Mountain View..."

    2. Re:Confusing much? by Just+Some+Guy · · Score: 2

      More like the Uncertainty Drive, as in "how did I end up here?"

      --
      Dewey, what part of this looks like authorities should be involved?
  8. Obligatory by Nidi62 · · Score: 2

    Ha Ha /Nelson

    --
    The only thing necessary for evil to triumph is for it to be pitted against a slightly greater evil
  9. Might as well switch the name in Mexico to: by DikSeaCup · · Score: 2, Funny

    yoPhone!

    --
    I talk about stuff.
  10. Apple initally stole the iPhone name from Cisco by rabun_bike · · Score: 4, Informative

    Let us not forget. Cisco (Linksys) then sued and accepted a settlement from Apple.

    http://en.wikipedia.org/wiki/Linksys_iPhone

    1. Re:Apple initally stole the iPhone name from Cisco by AZURERAZOR · · Score: 2

      Step 1 Defend in court
      Step 2 Win defensive case
      Step 3 Profit by selling the name back to Apple for $5B

    2. Re:Apple initally stole the iPhone name from Cisco by fuzznutz · · Score: 2

      Internet has nothing to do with it, Correct me if I am wrong, but I believe Apple started all their "i" shit when they migrated from PowerPC to Intel. Intel used to prefix the lower case "i" on their CPU chip designations prior to the (trademarked) Pentium and Apple adopted the practice to distinguish between PowerPC computers like the holdover MacMini, which was late to transition to intel, and the newer iMacs. (See "Power Mac" for differentiation)

      The marketing ploy seemed to stick and next thing you know Apple is selling "i"Pods with ARM chips.

      The i386 was released in 1985. The first iMac came in 1998. Intel's logo is still in all lower case.

    3. Re:Apple initally stole the iPhone name from Cisco by sribe · · Score: 2

      Internet has nothing to do with it, Correct me if I am wrong, but I believe Apple started all their "i" shit when they migrated from PowerPC to Intel.

      OK, you're wrong. The first iMac shipped in 1998, iPod and iTunes were released in 2001, the first Intel Mac shipped in 2006.

  11. So what is the iPhone going to be called, then? by anarkhos · · Score: 2

    It's a minor dilemma as Apple will sell the iPhone in every hispanic country except Mexico, where it will be called the, um, telefono de la manzana?

    But seriously, what will it be called?

    --
    >80 column hard wrapped e-mail is not a sign of intelligent
    >life
    1. Re:So what is the iPhone going to be called, then? by robi5 · · Score: 2

      Why should it be called *anything*? Branding is cool and all, but it's not like there is a law that your product be named. Apple does not "make" phones other than the iPhone so there should be no confusion.

      - Sir, would you check our selection of Android phones?
      - No, I'd like to buy an Apple phone / I'm interested in iOS devices / I want *one of these* here.
      - Which one?
      - 4S please / the shorter / less expensive / less magnificent one.
      - Here you are, ... pesos please.
      - Good bye.

      Then leave it to the population how they call it :-)

    2. Re:So what is the iPhone going to be called, then? by jenningsthecat · · Score: 4, Funny

      But seriously, what will it be called?

      Since it's an Apple product, call it the aPhone.

      The docking port? That's the aHole...

      --
      'The Economy' is a giant Ponzi scheme whose most pitiable suckers are the youngest among us and the yet-unborn.
  12. Apple went about it the wrong way by sandytaru · · Score: 2, Interesting

    Long ago, they should have just put in a copyright request for i* - paving the way in the future for the iTV, the iE-Cig, the iCar, etc...

    --
    Occasionally living proof of the Ballmer peak.
    1. Re:Apple went about it the wrong way by ikaruga · · Score: 2

      Not copyright but trademark. Copyright is for content and can only be granted upon the creation and publication of content. Trademark is for branding and can be registered at any moment, however defending them can be a bitch some times but if you don't do so you lose it.

  13. Re:Wait a second. by partyguerrilla · · Score: 5, Funny

    Yes we maintain several judicial facilities powered by burros and corruption.

  14. Re:Wait a second. by Greyfox · · Score: 4, Funny

    We're... we're not so different after all!

    --

    I'm trying to teach myself to set people on fire with my mind... Is it hot in here?

  15. Due diligence by girlinatrainingbra · · Score: 4, Insightful

    Well, if Apple didn't do its due diligence when applying for trademark status for "iPhone", that is its own fault. And obviously, they did not even do a cursory review of trademark status for their due diligence because Cisco already had an iPhone trademark, which they sued Apple for. Now they're in a situation that's even stronger than Cisco's (Cisco was not actively using "iPhone" even though it already had the trademark on it). iFone appears to have been actively and continuously used in trade in Mexico prior to Apple using "iPhone". Court battles can be long, so who knows.