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Apple loses right to iPhone brand name in Mexico [U]

updated 07:31 pm EDT, Fri November 2, 2012

Mexican iFone registered trade name four years before Apple

[Details of the case were severely misinterpreted by the original source, corrected version below] Apple has lost an injunction bid that would have allowed it to continue selling iPhone-branded products in Mexico. A court in Mexico City handed down a ruling last Thursday denying Apple's injunction request on the grounds that the iPhone brand is too phonetically similar to iFone, a brand belonging to a Mexican company that registered its name four years prior to Apple's filing for the iPhone brand mark. The decision stems from a legal action that Apple initially filed in 2009 requesting that the company cease using the iFone brand in order to head off the possibility of consumer confusion.

El Universal reports that the iFone trade name was registered in Mexico in 2003, some four years before Apple did so. Nonetheless, Apple sought unsuccessfully to gain sole control over the brand in the year after the iPhone first launched in Mexico.

A Mexican court cited the earlier trade name registration in refusing Apple's request, and the Mexican firm later countersued for damages, which could amount to 40 percent of iPhone sales revenue in Mexico. iFone's countersuit also sought to block Apple from selling the iPhone under its current name in Mexico.

iFone is a telecommunications company selling communications systems and services, including interfaces for IP-based telephone calls, virtual office services, and software for switching systems. It counts Microsoft Maxcom, Axtel, and Avay among its clients.

The decision could have a considerable impact on the Mexican smartphone market. Telcel and Movistar, numbers one and two among Mexican carriers, are scheduled to begin selling the iPhone 5 on Friday. It is not certain how quickly the sales ban will go into effect or if the two companies will come to some sort of financial settlement.

Update: Sharp eyes at The Verge have noticed and noted that the decision does not, in fact, prohibit Apple from selling iPhone-branded products in Mexico. The decision, instead, reaffirmed iFone's right to continue using its brand name. iFone's countersuit is reportedly still pending, iFone's demands -- a portion of iPhone sales and a potential sales ban -- have not yet been enforced. Electronista regrets and apologizes for the error in reporting.



By Electronista Staff
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  1. Zanziboy

    Forum Regular

    Joined: 08-27-08

    This situation seems ridiculous and really should have been cleared up under the auspices of the Free Trade Agreement. Clearly, the iPhone is a globally recognized brand and the iFone in Mexico is not. A globally-recognized brand should be able to supersede any local trademark claims by eminent domain where fairly and reasonably applied.

  1. JackWebb

    Fresh-Faced Recruit

    Joined: 08-31-07

    I can hardly blame the makers of iFone since they were attacked by Apple. There's no reasonable way for a company to assume that any word or non word that begins with a small "i" will once day be challenged by Apple. But for Mexico to reverse this is as bad or worse. These two can co-exist. Mexico is punishing themselves if Apple decides simply not sell iPhones in Mexico. That's what I'd do but then I wouldn't have contested iFone to begin with.

  1. wrenchy

    Forum Regular

    Joined: 11-03-09

    The brand "iPhone" originally belonged to Infogear back in 1993. Cisco later bought Infogear and then owned the rights. Apple copied the name and Cisco sued. The iPhone brand belonged to someone else. Apple copied and tried to buy their way out.

  1. blahblahbber

    Banned

    Joined: 02-01-05

    Good for mexico; crApple must have a sore thumb by now, & their tail between their legs. MEXICO DOESN'T PLAY GAMES.

    Keep crApple out!

    Mexico has access to more attractive technologies & products for consumers due to trade anyway. Looking for something special??... you will find it there rather than in the US. From European exotic cars (not US street-legal) to cutting edge electronics from Japan.

  1. Zanziboy

    Forum Regular

    Joined: 08-27-08

    Having a trademark and keeping a trademark are two different things. Cisco lost the right to the iPhone trademark as it had not been used by Cisco for several years. It was only when Apple queried about obtaining the iPhone trademark that CIsco started placing stickers on the exterior of the packaging that read "iPhone" in order to extort Apple. Simply having a trademark first does not mean it is yours and you can retain it. The trademark system works on industry presence, not who currently has it, or who had it first.

    Trademarks are not like a patents. Trademarks are retained by market awareness and use. Therefore, if you are a small operator and have a burger stand called Acme burgers, but have very little recognition, you can still loose your trademark if a new company called Acme becomes a global brand. By eminent domain, the more well-known Acme can obtain an exclusive to trademark Acme. The industry works this way because there are simply not enough business and product names to go around.

  1. Zanziboy

    Forum Regular

    Joined: 08-27-08

    blahblahbber: crApple Hmm, really? : How can one expect to get "cutting edge electronics from Japan" ? Mexico doesn't even have iPhones! :lol:

  1. jerry123

    Banned

    Joined: 11-02-12

    Same thing happened in China with Apple trademark. China proview tech claimed that iPad is its trademark, Apple can not sell iPad or products with iPad trademark. They went into court to fight for this, finally Apple lose and paid 60 million dollars.

  1. blahblahbber

    Banned

    Joined: 02-01-05

    Originally Posted by ZanziboyView Post

    Hmm, really? : How can one expect to get "cutting edge electronics from Japan" ? Mexico doesn't even have iPhones! :lol:

    Travel there and see it for yourself.

  1. Jim Denk

    Fresh-Faced Recruit

    Joined: 11-02-12

    I'd be interested to see if they did register the mark over there or not.

  1. Jim Denk

    Fresh-Faced Recruit

    Joined: 11-02-12

    Serves them right, can Apple please just stop suing everybody on earth? Trademark law usually says that this comes down to 'first use', meaning whoever either used the term first (in that geographical area) or whoever registered the trademark for the brand name first. They can't just start whining after the fact because they didn't bother to protect their intellectual property in Mexico. More info about trademarks and intellectual property is available at http://trademarkshop.ca/trade-mark-basics

  1. blahblahbber

    Banned

    Joined: 02-01-05

    Originally Posted by jerry123View Post

    Same thing happened in China with Apple trademark. China proview tech claimed that iPad is its trademark, Apple can not sell iPad or products with iPad trademark. They went into court to fight for this, finally Apple lose and paid 60 million dollars.

    Typical crApple tyrannical process, shoot first... take care of business later. They continue these tactics with disregard & disrespect.; "think different" should be changed to "dog eat dog world but we're here for you". haha

  1. Charles Martin

    MacNN Editor

    Joined: 08-04-01

    LOL -- now that the correction has been printed and the real story corrected, boy do our trolls look stupid. I mean, even more so than usual, and that's really saying something.

  1. blahblahbber

    Banned

    Joined: 02-01-05

    Originally Posted by chas_mView Post

    LOL -- now that the correction has been printed and the real story corrected, boy do our trolls look stupid. I mean, even more so than usual, and that's really saying something.

    Refrain from jumping the gun; no one said they cannot sell the cryPhones there. In the "unauthorized" market, you will see the phones out there too. This is the real world, come back to it when you are ready.

  1. Zanziboy

    Forum Regular

    Joined: 08-27-08

    There is no reason to read posts by blahblahbber as they are so predictable.

    I wonder if blahblahbber is a paid blogger or just an Apple hater (or both).

  1. msuper69

    Professional Poster

    Joined: 01-16-00

    Originally Posted by Jim DenkView Post

    Serves them right, can Apple please just stop suing everybody on earth? Trademark law usually says that this comes down to 'first use', meaning whoever either used the term first (in that geographical area) or whoever registered the trademark for the brand name first. They can't just start whining after the fact because they didn't bother to protect their intellectual property in Mexico. More info about trademarks and intellectual property is available at http://trademarkshop.ca/trade-mark-basics



    Actually, trademarks are usually sought for a specific type of product or service.
    The iPhone is for a piece of hardware.
    iFone is a communications systems and services company.
    Not related and hardly confusing to the public as most of iFone's customers would be companies, not individuals looking to buy a smartphone.

  1. Zanziboy

    Forum Regular

    Joined: 08-27-08

    I also want to add that trademark law is about far more than "first use". If this were the case, the world would be out of trademarks! This is why trademark law is so complicated. Global brands typically do not change their product names to do business in different countries.

    Any name that brands some kind of service or product is often not unique even within the same region, country, or global market. The rule of "first use" does not necessarily entitle an entity to retain a trademark. There are many mitigation issues that influence whether a company can retain a trademark for sole use. Such factors include the commercial success of the trademark, consumer confusion, and usage by its owner. If trademarks simply worked on the principle of "first use", companies could kill competition through trademark "squatting". In fact, due to an often ineffective legal system, trademark squatting is quite common despite trademark laws as often the trademark holder will win in court despite not having a legitimate claim. One good example of such a trademark dispute is the Apple Records versus Apple Computer trademark suit. Apple Records essentially held Apple hostage despite the fact there was little chance of anyone confusing the two companies. In fact, there are many companies in the UK using Apple as their name, including a well-known temp agency. Eventually, Apple simply paid a large sum of cast to take complete ownership of Apple Record's trademarks.

  1. Jim Denk

    Fresh-Faced Recruit

    Joined: 11-02-12

    Originally Posted by Jim DenkView Post

    Serves them right, can Apple please just stop suing everybody on earth? Trademark law usually says that this comes down to 'first use', meaning whoever either used the term first (in that geographical area) or whoever registered the trademark Canada for the brand name first. They can't just start whining after the fact because they didn't bother to protect their intellectual property in Mexico. More info about trademarks and intellectual property is available at The Trade-mark Shop / How to Avoid Common Trademark Mistakes | The Trade-mark Shop / Register a Trademark - Canada


    Originally Posted by msuper69View Post

    Actually, trademarks are usually sought for a specific type of product or service.
    The iPhone is for a piece of hardware.
    iFone is a communications systems and services company.
    Not related and hardly confusing to the public as most of iFone's customers would be companies, not individuals looking to buy a smartphone.


    No, Trademarks are used to protect Brands, slogans, names. So Apple probably lhas Trademarks for the Company 'Apple', as well as many of their brands/products, like 'iPhone', iPad etc. Check out the differences betweeen Trademarks, patents and copyrights at https://www.youtube.com/watch?v=IVYAOy466vs if you're interested.

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