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

Watch...

[Anonymous Coward]

...as Samsung quickly buys out iFone.

For "defensive IP," of course.

Didn't Do The Research

[TheSpoom]

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

Re:Didn't Do The Research

[Anonymous Coward]

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

Re:Didn't Do The Research

[sd4f]

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.

Re:Didn't Do The Research

[Anonymous Coward]

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

Re:Didn't Do The Research

[ByOhTek]

Ahh, you seem to think they are mutually exclusive.

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

Re:Didn't Do The Research

[bhagwad]

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.

Re:Didn't Do The Research

[TheGratefulNet]

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.

Re:Didn't Do The Research

[EasyTarget]

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.

Re:Didn't Do The Research

[poetmatt]

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.

Re:Didn't Do The Research

[NatasRevol]

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

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.

Re:Didn't Do The Research

[omnichad]

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.

Re:Didn't Do The Research

[Kyusaku Natsume]

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%

Re:Didn't Do The Research

[NoSleepDemon]

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!

I thought...

[Andy Prough]

... 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???

Maybe

[jasper160]

Ay Phone!

Re:Maybe

[Kielistic]

iDios mio

Wow, just wow

[mcgrew]

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!

Confusing much?

[Anonymous Coward]

"(...) 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...

Re:Confusing much?

[spyke252]

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

Apple initally stole the iPhone name from Cisco

[rabun_bike]

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

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

Re:Wait a second.

[partyguerrilla]

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

Re:Wait a second.

[Greyfox]

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

Due diligence

[girlinatrainingbra]

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.

Re:So what is the iPhone going to be called, then?

[jenningsthecat]

But seriously, what will it be called?

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

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