While it might sound like another comical knockoff product belonging in an internet picture gallery, Ifone is actually a Mexican telecommunications company based on the outskirts of Mexico City that has become the latest entity to defend its intellectual property against tech giant Apple.
Full marks to Ifone
This story began in 2009, when Apple challenged Ifone’s Mexican word mark ‘Ifone’ for non-use. Ifone’s domestic Mexican mark is registered in Class 38, which includes telecommunication services. It was in this class that Apple sought to establish that the mark was not being used so that it could extend its own international mark to Mexico. The Mexican Supreme Court of Justice of the Nation decided that, despite its humble size, Ifone was indeed carrying on business and was entitled to use the mark which had been registered in 2003, predating the launch of the iPhone by four years. The Ifone mark precluded Apple from registering its ‘IPHONE’ mark in class 38 in Mexico.
Ifone is now reportedly seeking damages from Apple (in the order of 40% of iPhone sales in Mexico), and that the iPhone be pulled from the market. Much more likely, however, is that a settlement will be reached, in the same manner that Apple famously settled with Swiss Railway service SBB over use of an iconic clock-face design in November last year.
Meanwhile, in Brazil…
Apple appears to be approaching a settlement in a similar matter in Brazil, where consumer electronics maker IGB Eletronica SA is asserting its ‘IPHONE’ mark that was filed in 2000 and approved in January 2008. Under Brazilian law, it is necessary for IGB to develop the brand within five years of gaining trade mark approval. The company released a line of low-cost smartphones (ironically operating on the Android system) under the name ‘iphone’ in late 2012, however IGB has since indicated a willingness to sell the mark, and may be hoping to reap a lucrative payout.
The position that Apple finds itself in is not unique – for companies that operate across borders, a multi-jurisdiction trade mark strategy is essential.
International registration of trademarks
An international mark under the Madrid System operates like a bundle of individual national registrations. From the date of international registration, the protection of a mark in each of the contracting states to the Madrid Protocol is the same as if the mark had been registered in each local jurisdiction. The applicant may designate contracting states in which the mark is to be protected, however this protection is limited where a valid national mark in the relevant class (see below) already belongs to someone else.
Trade marks are filed in classes, internationally-recognized categories that describe what a trade mark is for. For example, Apple Inc (developers of Macbooks, iPhones, iPods and so on) has an international word mark for ‘APPLE’ in class 9, which includes computers, software, cameras and mobile phones. On the other hand, the Coryn Group Inc, the parent company of Apple Vacations (a travel agency with no affiliation to Apple Inc), owns the ‘APPLE’ word mark in class 39, which includes travel arrangements.