Saturday, November 3, 2012

Trademark wars south of the border - iFone wins (but not as much as you think)

Back in 2010, I wrote a post about a number of products that had names beginning with the letter "i." These included the i-Dog, a number of iCarly products, and the iGasm.

I seem to have missed one:

iFone, S.A. de C.V. es una empresa de telecomunicaciones que vende sistemas y servicios de comunicación. Cuenta con la representación de AltiGen para México, Latinoamérica y España que está desarrollando actualmente su red de distribuidores para la comercialización de sus productos; AltiGen Communications Inc. es una empresa de alta tecnología que fabrica “PC-PBX” conocidos también como “soft-switches”; hardware y software de comunicación que corren sobre servidores Windows 2000. Este es un cambio en la industria que puede compararse con lo que paso con los Mainframes y la PCs.

But Apple was paying attention to what was going on in Mexico, and was even less pleased about iFone than it was about the iGasm. According to Fox News Latino, Apple went to court:

In 2009, Apple filed a complaint against iFone with the Mexican Industrial Property Institute, or IMPI, demanding that firm stop using its brand name because the phonetic similarities could confuse users.

Only one problem:

But the petition was denied after authorities found that iFone - a provider of software for call centers - had registered its trade name in Mexico in 2003, four years before Apple did.

The Mexican firm later filed a countersuit for damages and to block Apple from selling its flagship smartphone product in Mexico.

Forbes writer Tim Worstall offers some clarification:

Apple can use iPhone for the phone, or for a gaming device, because they have that trademark in that sector. What they can’t use it for is telecommunications services: which isn’t really all that important to the company even if it’s worth attempting to get the trademark in that class.

Worstall references an item in the Verge that explains that the "iFone" trademark is in Class 38, telecommunications services, while Apple has "iPhone" trademarks in Classes 9 and 28. In the United States, Apple does have a Class 38 trademark on "iPhone," and the whole case was about an attempt to get the Class 38 trademark in Mexico recognized.

So what's the net result of the court case? According to The Verge, Apple cannot use "iPhone" for telecommunications services in Mexico. In the short run, this is not a big deal.

But it could be a big deal later. Why do I say this? Because of the history of the term "Apple" itself. As you are probably aware, Apple Corps and the company formerly known as Apple Computer have a long history of litigation. Back in 1981, when Apple was known as the Apple II company, it reached an agreement with Apple Corps in which it agreed not to enter the music business. At the time that seemed reasonable - why would a company that manufactured personal computers want to sell records and cassettes?

Fast forward a couple of decades, and Steve Jobs is selling iPod hardware and iTunes software. Needless to say, both sides ended up in court again. However, Apple Corps lost, and now Apple owns the Apple Corps logo.

So while it doesn't appear that iFone's win is a big deal at the moment, what could happen twenty years from now?

P.S. It was personally amusing for me to read this, because in the current draft of my business fiction ebook, there is a mention of a legal tussle - not a trademark tussle, but a patent tussle. For details, you'll have to read the book (once I finally finish it).
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