Apple Loses Trademark Claim Against iFone in Mexico 192
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."
Watch... (Score:5, Interesting)
...as Samsung quickly buys out iFone.
For "defensive IP," of course.
Didn't Do The Research (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.
Re:Didn't Do The Research (Score:5, Insightful)
Given (or especially since) it's Apple, why not both?
Re:Didn't Do The Research (Score:5, Interesting)
When it comes to Apple, never attribute to incompetence what can be better explained by malice.
Re:Didn't Do The Research (Score:5, Funny)
Ahh, you seem to think they are mutually exclusive.
You've obviously never met my ex-girlfriend...
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I can look back and laugh about it now, but at the time it really wasn't funny...
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Wow. Some more and you may file a class action lawsuit. Unless her EULA explicitly dropped your rights for it.
Now for the serious part: yeah, girls like that may drive us crazy. I had a similar experience, and it was really hard to put an end to it.
Re:Didn't Do The Research (Score:5, Funny)
Re:Didn't Do The Research (Score:4, Informative)
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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.
Re:Didn't Do The Research (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.
Re:Didn't Do The Research (Score:5, 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 [patentlyapple.com]
Re:Didn't Do The Research (Score:5, Informative)
True.
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.
That's a popular characterization of the agreement, though the actual details were (as is usually the case with legal agreements) considerably more complicated.
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.
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Ooh ok, they didn't lose, they just failed to win. .sig really.
- My bad, here was I thinking that the purpose of the competition was to win. Shoulda read my own
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
?
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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.
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If there was a settlement then clearly they didn't lose.
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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
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It can't be that, because Apple sued first claiming that the older trademark infringed upon theirs.
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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
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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.
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Did the IOC hold that trademark in the area of food service?
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The word Olympic may be used, without sanction, to identify a business or goods or services if:
Also, any use of Olympic commencing before September 21, 1950, may continue.
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Don't get me started on the IOC.
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I cannot wait until Apple claims the rights to the word iDIOT....
Re:Didn't Do The Research (Score:5, 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.
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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.
Re:Didn't Do The Research (Score:5, 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.
Re:Didn't Do The Research (Score:5, 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.
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Yeah, like Intel not expecti
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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.
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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.)
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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!
Re:Didn't Do The Research (Score:5, 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.
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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
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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
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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.
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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.
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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.
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Re:Didn't Do The Research (Score:5, 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%
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I thought... (Score:4, Interesting)
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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)
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Or YoPhone. ;)
Re:Maybe (Score:4, Funny)
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I thought that was the jPhone...
Wow, just wow (Score:4, 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!
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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).
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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
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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.
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Because you are an expert in Mexican trademark law and have all the details like whether an active lawsuit would put a pause on such actions (you would put one on hold while the other case ran in any sane (and yes I realise applying sane to a legal system is crazy) setup).
Confusing much? (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...
Re:Confusing much? (Score:5, Funny)
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You laugh, but one day shortly after iOS 6's release I decided to follow Maps's turn-by-turn directions to the letter. En route from Alameda to Oakland, I ended up on Angel Island.
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More like the Uncertainty Drive, as in "how did I end up here?"
Obligatory (Score:3)
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I wonder why that didn't work (Score:2)
Might as well switch the name in Mexico to: (Score:3, Funny)
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if its tetherable, its then a:
(wait for it)
yo-yo phone
Apple initally stole the iPhone name from Cisco (Score:5, Informative)
http://en.wikipedia.org/wiki/Linksys_iPhone [wikipedia.org]
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Step 1 Defend in court
Step 2 Win defensive case
Step 3 Profit by selling the name back to Apple for $5B
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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
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The marketing ploy seemed to stick and next thing you
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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.
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Intel used to? I have an Intel Core i7 right now. I don't think there's any correlation at all.
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No no no! 1998 was the time of e-mail and e-commerce. ICT was still called IT and gold was worth $200 an ounce. We all had onions tied to our belts as was the style of the time.
So what is the iPhone going to be called, then? (Score:3)
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?
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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? ... pesos please.
- 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,
- Good bye.
Then leave it to the population
Re:So what is the iPhone going to be called, then? (Score:5, 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...
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ManzanaPhone
Apple went about it the wrong way (Score:3, Interesting)
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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.
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Except ITV was already in use before Apple even existed
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paving the way in the future for the ... iCar ...
I bet we'll see an Android car first.
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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.
Good for them (Score:2)
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.
Yessss! (Score:2)
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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)
Typical bully behavior ... (Score:2)
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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Apple has more bribe money, so I'm surprised they lost.
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bit of advice to them: don't drink the iWater.
(alt: 'you're not drinking it right!')
Re:Wait a second. (Score:5, Funny)
Re:Wait a second. (Score:5, Funny)
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"yo quiero iFone!"
(woof, woof)
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* assuming said corporation isn't owned by Carlos Slim, or a front for one of the cartels... something tells me that would make a difference.
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sometimes, if the other guy is much much bigger, they can shut you down or threaten to or just make your life difficult.
CSB time: a company I worked for a long time ago was called 'pictel' (later renamed 'picture tel'). back when it was pictel, PacTell (the west coast phone company) said that the 2 names were too close and that pictel had to change theirs. they gave in and either fought and lost or chose not to fight. they were a small startup and even though east coast (mass) based pictel has nothing to
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