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Iphone The Courts Apple

Apple Loses Trademark Claim Against iFone in Mexico 192

Posted by Soulskill
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."
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Apple Loses Trademark Claim Against iFone in Mexico

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  • Watch... (Score:5, Interesting)

    by Anonymous Coward on Friday November 02, 2012 @09:31AM (#41852165)

    ...as Samsung quickly buys out iFone.

    For "defensive IP," of course.

  • by TheSpoom (715771) <slashdot&uberm00,net> on Friday November 02, 2012 @09:32AM (#41852169) Homepage Journal

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

    • by Anonymous Coward on Friday November 02, 2012 @09:39AM (#41852263)

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

    • by sd4f (1891894) on Friday November 02, 2012 @09:48AM (#41852349)
      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.
      • by TheSpoom (715771)

        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.

        • by EasyTarget (43516) on Friday November 02, 2012 @10:09AM (#41852561) Journal

          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.

          • by NatasRevol (731260) on Friday November 02, 2012 @10:24AM (#41852715) Journal

            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 [patentlyapple.com]

          • by DragonWriter (970822) on Friday November 02, 2012 @10:31AM (#41852793)

            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: (Score:3, Interesting)

              by EasyTarget (43516)

              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

              ?

          • by sribe (304414)

            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.

            IIRC, Apple Corps did not lose to Apple Computer; rather they reached a settlement involving Apple Computer paying lots of money to amend their agreement over the use of the trademark.

          • by nedlohs (1335013)

            If there was a settlement then clearly they didn't lose.

        • by sribe (304414)

          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.

          The answer to your question almost must be no, because the law is so very clear. So the question would become, what the hell is Apple thinking?

          I actually waded through the article, and it turns out that iFone sells software to call centers. So, perhaps, Apple is thinking that is a sufficiently different line of business that consumers will not be confused. (I know that in the US, cell phones and call center software are certainly different categories for trademark.)

          The article mentions nothing about Apple t

          • by sjames (1099)

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

            • by sribe (304414)

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

              Apple sued first, that much I can believe. But why is not something I trust the media to report accurately. Do you actually believe that reporters would know the difference between Apple suing to take the trademark away from iFone completely vs Apple suing to take the trademark away for a particular field of use for which it was never actually used? I don't believe that for a second.

              I have no way of knowing whether or not this is the case; I'm just pointing out the possibility because I know how sloppy repo

              • by sjames (1099)

                Either the trademark was in use in their particular business and they sued to take it away in spite of being the interloper OR it was not and a suit would be entirely unnecessary. In order to be the plaintiff, Apple had to claim to have been wronged.

        • by jazman_777 (44742)
          Yes, in the run-up to the 1996 Olympics in Atlanta, the Atlanta Committe for the Olympic Games (ACOG) attacked a Greek restaurant called "The Olympic" which had been there forever, forcing a name change.
          • No, because ACOG did that under the auspices of the IOC, which has had the trademark on "Olympic" in the U.S. since at least 1950 (according to the USOC, any use of Olympic that dates to before September 21, 1950 is not in violation of U.S. trademark law).
            • by sjames (1099)

              Did the IOC hold that trademark in the area of food service?

              • My understanding is that they got a law passed in Sept of 1950 giving them that trademark in just about everything. The exceptions are listed in the following:

                The word Olympic may be used, without sanction, to identify a business or goods or services if:

                1. 1. such use is not combined with any of the Olympic trademarks
                2. 2. it is evident from the circumstances that such use of the name "Olympic" refers to the naturally occurring mountains or geographical region of the same name, and that it does not refer to the Corporation or to any Olympic activity
                3. 3. such business, goods or services are operated, sold and marketed in the state of Washington, west of the Cascade Mountain range, and marketing outside this area is not substantial

                Also, any use of Olympic commencing before September 21, 1950, may continue.

          • by TheSpoom (715771)

            Don't get me started on the IOC.

      • Re: (Score:2, Funny)

        by gedeco (696368)

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

      • it's just the modus operandi of the adversarial legal system

        If every person on Earth would walk as close to the line of what is legally acceptable as Apple, what a world we would live in.

    • by bhagwad (1426855) on Friday November 02, 2012 @09:52AM (#41852415) Homepage

      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.

      • by poetmatt (793785) on Friday November 02, 2012 @10:17AM (#41852649) Journal

        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.

      • You're stunned that they litigated? Which part? Some higher up at Apple signed off on pursuing a ridiculous, abusive lawsuit that defies all logic? Surely you aren't stunned that the lawyers suggested such a stupid waste of billable time in the first place.
      • by tlhIngan (30335)

        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.

        Yeah, like Intel not expecti

    • This isn't the first time that this has happened. Cisco owned the trademarks on both iPhone and IOS when Apple launched the device. Apple now licenses these both from Cisco. The other high-profile example is Rendezvous, Apple's name for ZeroConf, which just so happened to be the name of someone else's product that did something similar. They had to rebrand all of their Rendezvous stuff as Bonjour. Apple and Google both have a tendency to skip trademark searches and just launch products, then deal with
      • by bhagwad (1426855)

        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.

        • by xaxa (988988)

          GMail was called GoogleMail for a while in the EU, as a German company had a trademark for GMail. I can't remember any details, except that a few people I know still have @googlemail.com addresses (if they signed up before Google bought the trademark). (You can change to @gmail.com, and both work anyway. It's just what other people see, I think.)

          • by bhagwad (1426855)

            Just checked out the history. It seems that Google negotiated a settlement with the German company after a while. It looked as if the local company had sued Google rather than the other way around as in this story!

      • by TheGratefulNet (143330) on Friday November 02, 2012 @10:08AM (#41852547)

        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.

        • Patents are different than trademarks; for patents, damages increase if the infringement is deemed willful, so having deniability under oath is a good thing.

          What is supposed to happen of course, if you think something might be patented, is to call the company lawyer, and then do a patent search in his presence. That ought to be covered by attorney-client privileges and you could deny it ever happened while under oath.

          I'm not a lawyer, of course; that's just a rough summary of what I was told by one of our

          • by Shotgun (30919)

            There are multiple ways of handling this. The grandparent's lawyer accepted the position the a patent search is pointless. There are so many patents covering so many things that are so broad, if you're doing anything at all interesting it is most likely covered, (or worse, can be construed to be covered) by someone else's patent that a search is bound to uncover something. You'll never be able to ship anything. If you don't look, then you won't feel any ramifications until the patent holder identifies t

          • Since the communication happened only so that the client could commit a tort, I don't think attorney-client privileges apply, since they would fall under the crime/tort/fraud exception: http://www.taxlitigator.com/articles/168364.htm [taxlitigator.com]

            IANAL, though.

        • by Baloroth (2370816)

          It's one thing to do that. It's totally another to try to file a trademark suit against someone who already existed and has been using the mark for years before you. That isn't just intentional ignorance, that's deliberate dickishness. The correct practice is to use a different name in that region. Other very major companies do exactly that (I forget which, but at least one major chain store goes by a different name in one state due to this exact issue), but Apple doesn't want to follow the rules.

    • Considering that the trademark was 4 years before Apple I would say it was just arrogance. Apple seems to behave as if courts will automatically award them rights because of their size and the fact that everyone knows who they are. In many cases this is exactly what happens. This time it did not.
    • Live by the lawsuit, die by the lawsuit.

      They could've sat down with them and come to an agreement like reasonable adults but they instead reached for their guns. Too bad.

    • by hairyfeet (841228)

      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

    • by Kyusaku Natsume (1098) on Friday November 02, 2012 @01:50PM (#41855237)

      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%

    • by rosciol (925673)
      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 [wikipedia.org].
  • I thought... (Score:4, Interesting)

    by Andy Prough (2730467) on Friday November 02, 2012 @09:32AM (#41852173)
    ... 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???
    • Carlos Slim is the richest man in the world thanks that he bought the state's telephone monopoly business for less than 10% of its real value, and he kept that monopoly for more than 15 years. The key to understand Mexico's history of economic failures in the last 30 years instead of the enormous success of the south koreans that 30 years ago had the same level of development of Mexico is that here our crony capitalists are lazy beyond belief, and the concentration of wealth simply is killing our internal m

  • Maybe (Score:5, Funny)

    by jasper160 (2642717) on Friday November 02, 2012 @09:32AM (#41852175)
    Ay Phone!
  • Wow, just wow (Score:4, Insightful)

    by mcgrew (92797) * on Friday November 02, 2012 @09:33AM (#41852187) Homepage Journal

    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!

    • by Compaqt (1758360)

      Apple had it coming. Couldn't happen to a better bunch of folks.

      I hope iFone socks it to them (and it looks like they plan to).

    • Re: (Score:3, Insightful)

      by tuppe666 (904118)

      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 o

      • by mcgrew (92797) *

        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.

  • by Anonymous Coward on Friday November 02, 2012 @09:36AM (#41852225)

    "(...) 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...

  • by Nidi62 (1525137) on Friday November 02, 2012 @09:36AM (#41852227)
    Ha Ha /Nelson
  • I guess that "cuz we're way bigger and awesomer" doesn't really fly in Mexican courts either. First one in gets it!
  • by DikSeaCup (767041) on Friday November 02, 2012 @09:43AM (#41852293) Homepage
    yoPhone!
  • by rabun_bike (905430) on Friday November 02, 2012 @09:44AM (#41852311)
    Let us not forget. Cisco (Linksys) then sued and accepted a settlement from Apple.

    http://en.wikipedia.org/wiki/Linksys_iPhone [wikipedia.org]
    • Step 1 Defend in court
      Step 2 Win defensive case
      Step 3 Profit by selling the name back to Apple for $5B

    • by sribe (304414)

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

      Cisco would have lost that case, because they had abandoned the mark. (You have to actively use a trademark in commerce in order to maintain it. If you discontinue the product, do not release another product under the name, and otherwise do not use the name, you have abandoned the mark. Cisco had done that, and then tried to file a faked renewal--had they gone to trial, not only would they have lost on preliminary judgment, some employee *might*, depending on the judge's mood, have wound up in very hot wate

  • by anarkhos (209172) on Friday November 02, 2012 @09:46AM (#41852327)

    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?

    • by robi5 (1261542)

      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

    • by jenningsthecat (1525947) on Friday November 02, 2012 @10:58AM (#41853127)

      But seriously, what will it be called?

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

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

    • by Tarlus (1000874)

      ManzanaPhone

  • by sandytaru (1158959) on Friday November 02, 2012 @09:48AM (#41852347) Journal
    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...
    • 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...

      Copyright cannot be created by request but by creating a copyrighted work. But I think there is prior art of people using the letter i anyways.

    • by ikaruga (2725453)
      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.
    • by stiggle (649614)

      Except ITV was already in use before Apple even existed

    • paving the way in the future for the ... iCar ...

      I bet we'll see an Android car first.

    • 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...

      Apple are totally going to sue Fu Xi [wikipedia.org] for starting the iChing in 2850 BC. All I can say is that it's a good thing for Fu that he's dead. And fictional.

  • Apple is awfully damned arrogant thinking that another company that had the name for years before they introduced the product should have to stop using it's name just because Apple came along.

  • This means I can move forward on my next project: The iFoam memory mattress.
    • by Shotgun (30919)

      Which reports to the internet whenever someone lays down so that you can know who's been sleeping in your bed? Are you a bear?

  • Due diligence (Score:5, Insightful)

    by girlinatrainingbra (2738457) on Friday November 02, 2012 @10:19AM (#41852669)
    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.
  • At a place I worked for we had a similar experience ... the company had a product (their central/main product) named "Telekon" (composite of "Telefonverkauf" - Sales by phone - and "Kontraktverwaltung" - Contract management) for which they even had a trademark. When the national, state-owned mail & phone company Deutsche Bundespost decided to split up in 1995 into separate companies, one of which was the phone part, they named themselves "Deutsche Telekom". Shortly after, they tried to bully the small c

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