11 ms·

Apple has lost their legal claim to the iPhone name in Mexico

125 points by mun2mun 14y ago

Mordor 14y ago
They could always call it the iGalaxy :-S
moron 14y ago
Hear folks 'round these parts tell it, Apple deserves anything and everything they get.
nachteilig 14y ago
I guess this is the other side of the coin as far as their brashly-use-trademarks-and-sort-it-out-later methods go. Not a bad track record though.
feralchimp 14y ago
Somehow I'm not worried about their brand getting usurped.
rhplus 14y ago
This appears to be the iFone trademark holders in Mexico: http://www.ifone.com.mx/frameset_productos_oficina.htm http://www.ifone.com.mx/frameset_productos_oficina.htm
neya 14y ago
Here's the brief - There's a telecom company by the name "iFone" in Mexico. And Apple sued them unnecessarily...and lost the case. "The iFone trademark was filed in Mexico in 2003, a full four years before Apple filed to trademark the iPhone. Despite the rather obvious priority issue, Apple decided to sue iFone in 2009 in an attempt to invalidate the company’s name for being too similar to the iPhone. The predictable response was a countersuit by iFone, and the court battles have been swinging in iFone’s favor ever since." I think Apple deserves this and perhaps, even more.
- markokocic 14y ago
  However, this is a win-win situation for lawyers, at both Apple and iFone.
  - DannyBee 14y ago
    Err, what? They are salaried. It's a "win" for iFone's outside counsel, and a blow for Apple's. It's barely a win at all, most likely. Yes, they get paid, but companies move legal business around all the time depending on wins/losses and quality of advice (and how that advice fared in court). I'm always a bit boggled at why folks think stuff like this is a "win" for lawyers, just because some lawyer makes money. Dealing with these kinds of cases with clients like Apple is like running 2 startups at once. You are working 14+ hour days for a year, dealing with tons of emergencies, researching 100 page briefs as fast as you can, etc. This is not the win. The real "win" is apple paying you 1k/hr hour to do relatively simple stuff because you won this case. If you lose, well, it's "what have you done for me lately". Hell, if you lose, Apple would probably demand an hourly rate reduction if you want to keep their business.
    - malandrew 14y ago
      It's a win in the sense that you will always take home big bucks. Yes, it's a lot of work, but there isn't a risk of no payout in the case your side loses. Startup success or failure means big bucks or no bucks. Lawsuit success or failure means big bucks or even bigger bucks.
      - benmanns 14y ago
        So you're an employee of a company, and the company goes bankrupt in part because you're not doing your job properly (and the lawyers were probably doing their job properly - they just incorrectly predicted the outcome of the case, or an executive pushed it through anyways), but you still got paid your salary. That's a huge win right? Lawyers (good ones) want to provide value for their clients/employers as much as a (good) developer does.
      - 14y ago
jbigelow76 14y ago
This article says a lot about Apple's current disposition: "It’s not actually clear what Apple was thinking this time around – the iFone trademark was filed in Mexico in 2003, a full four years before Apple filed to trademark the iPhone. Despite the rather obvious priority issue, Apple decided to sue iFone in 2009 in an attempt to invalidate the company’s name for being too similar to the iPhone. The predictable response was a countersuit by iFone, and the court battles have been swinging in iFone’s favor ever since." I'm glad to see them get knocked down a few pegs on stuff like this. Apple could use a modicum of humility.
unreal37 14y ago
Not sure why Apple sued iFone in 2009 "for being too similar to iPhone" when iFone has been around much longer. That was a dumb move.
- erifneerg 14y ago
  I would a though iPod made more sense but waiting until 2009 is odd.
tmister 14y ago
Exposing tensions between execs through Frostall's departure, slap by UK court, less enthusiasm surrounding iPad mini lunch and now this. It has been a bad week for Apple.
cvander 14y ago
Seems like the legal department of Apple is busy lately.
- belorn 14y ago
  For the last 2 years yes.
malandrew 14y ago
I'm wondering if they could work the phonetic angle since the "ph" orthography doesn't exist in spanish. Instead they should conduct the entire case calling it the "eep-hoan-ey". In ads and campaigns they could go out of their way to never pronounce iPhone (then again, I'm not sure trademarks extend to the phonetic pronunciation, so maybe the pronunciation used in deciding the case matters. I think trademarks only cover orthography).
tristan_juricek 14y ago
Something tells me, that even with a loss in court, it was worth having a few years of iPhone sales as the "iPhone". It'll probably eventually be called the "Apple Phone"; but people will still call it iPhone.
- icebraining 14y ago
  But why sue and expose themselves to an injunction?
  - MichaelApproved 14y ago
    Maybe being on offense allowed them to set the pace of the trial more and possibly be in a better position for a settlement in the case. I'd be great to hear from a lawyer if this speculation is correct.
antidoh 14y ago
aPhone.
meanJim 14y ago
Why does this article have any significance to anyone here? Feels like a tabloid article trying to generate controversy over something that will probably end up being resolved.
mratzloff 14y ago
They most likely sued iFone on the basis of the "i" prefix branding. iMac was released in 1998, iPod and iTunes in 2001. They sued in 2009, but it was only in 2010 that an Australian tribunal ruled that the "i" prefix could not be an Apple trademark. And that only applies in Australia. Now, did iFone choose their name based on the positive connotations associated with Apple? I doubt it. And looking at their website, it's about as far removed from Apple as possible.
- Steko 14y ago
  "Now, did iFone choose their name based on the positive connotations associated with Apple? I doubt it." I see no reason to doubt it. There are exceptions but "i" prefix anything generally is trying to cash in on the association. Whether Apple deserves to be the only company that can use "i" prefix is another matter (I would say no). This is simply another case where Apple will end up writing a big check. They did it for iPad in China, iPhone from Cisco, the swiss clock thing a couple months ago, etc. Again the difference is Apple users aren't crying about how broken the world is because they have to write a check for walking all over some other companies IP.
  - swombat 14y ago
    Apple's iStuff wasn't so trendy in 2003, so it's unlikely that the Mexican telco chose iFone because of Apple. Today, it would be another matter. Today, a new product named iSomething is most likely trying to piggy back on Apple's coolness factor.
    - cycrutchfield 14y ago
      iPod came out in 2001
      - rem7 14y ago
        ...in the US. Mexico didn't get iPods that year. Mexico didn't even get the first version of the iPhone when it came out. You had to buy it in the US and unlock it. I think the first iPhone legally available in Mexico was the 3G.
ladzoppelin 14y ago
How did they think they could win this? Does any lawyer have a theory on what they were going for?
cpeterso 14y ago
Aren't "iPhone" and "iOS" technically trademarks of Cisco, not Apple?
- joenathan 14y ago
  In Mexico?
- Karunamon 14y ago
  Apple licensed the IOS name from Cisco. http://blogs.cisco.com/news/cisco_and_apple_agreement_on_ios_trademark/ http://blogs.cisco.com/news/cisco_and_apple_agreement_on_ios...
rome 14y ago
I wonder why Apple took this route. When they introduced the iPod they made an agreement with Line 6 who owns the mark Pod for the guitar effects processor.
rbn 14y ago
Is it me or have all apple related article in the past 2 weeks been negative.
- deleted 14y ago
  [deleted]
CamperBob2 14y ago
So how's that nuclear war going for you, Steve-O? Had time to rent a copy of WarGames yet?
akshat 14y ago
This is a non-news. The Verge has an article mentioning that the loss has no impact on Apple's ability to use the name. http://www.theverge.com/2012/11/2/3591380/iphone-ifone-and-apples-mexican-trademark-standoff-whats-really-going http://www.theverge.com/2012/11/2/3591380/iphone-ifone-and-a...
- jpalomaki 14y ago
  Seems to be much better description about the case than the original article. Excerpts from the article: - Apple already owns two iPhone trademarks in Mexico in Class 9 and Class 28 - in 2009, Apple's lawyers decided iFone's Mexican Class 38 mark wasn't being actively used, and they filed a lawsuit to try and get it canceled so they could register their own pending Class 38 mark on "iPhone." - iFone obviously disagreed and convinced the Mexican courts that they were still using the mark in commerce Class 9 = computers, software, cameras, and mobile phone class 28 = electronic game devices Class 38 = communication services

125 points by mun2mun 14y ago

Mordor 14y ago

They could always call it the iGalaxy :-S

moron 14y ago

Hear folks 'round these parts tell it, Apple deserves anything and everything they get.

nachteilig 14y ago

I guess this is the other side of the coin as far as their brashly-use-trademarks-and-sort-it-out-later methods go. Not a bad track record though.

feralchimp 14y ago

Somehow I'm not worried about their brand getting usurped.

rhplus 14y ago

This appears to be the iFone trademark holders in Mexico: http://www.ifone.com.mx/frameset_productos_oficina.htm http://www.ifone.com.mx/frameset_productos_oficina.htm

neya 14y ago

Here's the brief - There's a telecom company by the name "iFone" in Mexico. And Apple sued them unnecessarily...and lost the case. "The iFone trademark was filed in Mexico in 2003, a full four years before Apple filed to trademark the iPhone. Despite the rather obvious priority issue, Apple decided to sue iFone in 2009 in an attempt to invalidate the company’s name for being too similar to the iPhone. The predictable response was a countersuit by iFone, and the court battles have been swinging in iFone’s favor ever since." I think Apple deserves this and perhaps, even more.

markokocic 14y ago
However, this is a win-win situation for lawyers, at both Apple and iFone.
- DannyBee 14y ago
  Err, what? They are salaried. It's a "win" for iFone's outside counsel, and a blow for Apple's. It's barely a win at all, most likely. Yes, they get paid, but companies move legal business around all the time depending on wins/losses and quality of advice (and how that advice fared in court). I'm always a bit boggled at why folks think stuff like this is a "win" for lawyers, just because some lawyer makes money. Dealing with these kinds of cases with clients like Apple is like running 2 startups at once. You are working 14+ hour days for a year, dealing with tons of emergencies, researching 100 page briefs as fast as you can, etc. This is not the win. The real "win" is apple paying you 1k/hr hour to do relatively simple stuff because you won this case. If you lose, well, it's "what have you done for me lately". Hell, if you lose, Apple would probably demand an hourly rate reduction if you want to keep their business.
  - malandrew 14y ago
    It's a win in the sense that you will always take home big bucks. Yes, it's a lot of work, but there isn't a risk of no payout in the case your side loses. Startup success or failure means big bucks or no bucks. Lawsuit success or failure means big bucks or even bigger bucks.
    - benmanns 14y ago
      So you're an employee of a company, and the company goes bankrupt in part because you're not doing your job properly (and the lawyers were probably doing their job properly - they just incorrectly predicted the outcome of the case, or an executive pushed it through anyways), but you still got paid your salary. That's a huge win right? Lawyers (good ones) want to provide value for their clients/employers as much as a (good) developer does.
    - 14y ago

jbigelow76 14y ago

This article says a lot about Apple's current disposition: "It’s not actually clear what Apple was thinking this time around – the iFone trademark was filed in Mexico in 2003, a full four years before Apple filed to trademark the iPhone. Despite the rather obvious priority issue, Apple decided to sue iFone in 2009 in an attempt to invalidate the company’s name for being too similar to the iPhone. The predictable response was a countersuit by iFone, and the court battles have been swinging in iFone’s favor ever since." I'm glad to see them get knocked down a few pegs on stuff like this. Apple could use a modicum of humility.

unreal37 14y ago

Not sure why Apple sued iFone in 2009 "for being too similar to iPhone" when iFone has been around much longer. That was a dumb move.

erifneerg 14y ago
I would a though iPod made more sense but waiting until 2009 is odd.

tmister 14y ago

Exposing tensions between execs through Frostall's departure, slap by UK court, less enthusiasm surrounding iPad mini lunch and now this. It has been a bad week for Apple.

cvander 14y ago

Seems like the legal department of Apple is busy lately.

belorn 14y ago
For the last 2 years yes.

malandrew 14y ago

I'm wondering if they could work the phonetic angle since the "ph" orthography doesn't exist in spanish. Instead they should conduct the entire case calling it the "eep-hoan-ey". In ads and campaigns they could go out of their way to never pronounce iPhone (then again, I'm not sure trademarks extend to the phonetic pronunciation, so maybe the pronunciation used in deciding the case matters. I think trademarks only cover orthography).

tristan_juricek 14y ago

Something tells me, that even with a loss in court, it was worth having a few years of iPhone sales as the "iPhone". It'll probably eventually be called the "Apple Phone"; but people will still call it iPhone.

icebraining 14y ago
But why sue and expose themselves to an injunction?
- MichaelApproved 14y ago
  Maybe being on offense allowed them to set the pace of the trial more and possibly be in a better position for a settlement in the case. I'd be great to hear from a lawyer if this speculation is correct.

antidoh 14y ago

aPhone.

meanJim 14y ago

Why does this article have any significance to anyone here? Feels like a tabloid article trying to generate controversy over something that will probably end up being resolved.

mratzloff 14y ago

They most likely sued iFone on the basis of the "i" prefix branding. iMac was released in 1998, iPod and iTunes in 2001. They sued in 2009, but it was only in 2010 that an Australian tribunal ruled that the "i" prefix could not be an Apple trademark. And that only applies in Australia. Now, did iFone choose their name based on the positive connotations associated with Apple? I doubt it. And looking at their website, it's about as far removed from Apple as possible.

Steko 14y ago
"Now, did iFone choose their name based on the positive connotations associated with Apple? I doubt it." I see no reason to doubt it. There are exceptions but "i" prefix anything generally is trying to cash in on the association. Whether Apple deserves to be the only company that can use "i" prefix is another matter (I would say no). This is simply another case where Apple will end up writing a big check. They did it for iPad in China, iPhone from Cisco, the swiss clock thing a couple months ago, etc. Again the difference is Apple users aren't crying about how broken the world is because they have to write a check for walking all over some other companies IP.
- swombat 14y ago
  Apple's iStuff wasn't so trendy in 2003, so it's unlikely that the Mexican telco chose iFone because of Apple. Today, it would be another matter. Today, a new product named iSomething is most likely trying to piggy back on Apple's coolness factor.
  - cycrutchfield 14y ago
    iPod came out in 2001
    - rem7 14y ago
      ...in the US. Mexico didn't get iPods that year. Mexico didn't even get the first version of the iPhone when it came out. You had to buy it in the US and unlock it. I think the first iPhone legally available in Mexico was the 3G.

ladzoppelin 14y ago

How did they think they could win this? Does any lawyer have a theory on what they were going for?

cpeterso 14y ago

Aren't "iPhone" and "iOS" technically trademarks of Cisco, not Apple?

joenathan 14y ago
In Mexico?
Karunamon 14y ago
Apple licensed the IOS name from Cisco. http://blogs.cisco.com/news/cisco_and_apple_agreement_on_ios_trademark/ http://blogs.cisco.com/news/cisco_and_apple_agreement_on_ios...

rome 14y ago

I wonder why Apple took this route. When they introduced the iPod they made an agreement with Line 6 who owns the mark Pod for the guitar effects processor.

rbn 14y ago

Is it me or have all apple related article in the past 2 weeks been negative.

deleted 14y ago
[deleted]

CamperBob2 14y ago

So how's that nuclear war going for you, Steve-O? Had time to rent a copy of WarGames yet?

akshat 14y ago

This is a non-news. The Verge has an article mentioning that the loss has no impact on Apple's ability to use the name. http://www.theverge.com/2012/11/2/3591380/iphone-ifone-and-apples-mexican-trademark-standoff-whats-really-going http://www.theverge.com/2012/11/2/3591380/iphone-ifone-and-a...

jpalomaki 14y ago
Seems to be much better description about the case than the original article. Excerpts from the article: - Apple already owns two iPhone trademarks in Mexico in Class 9 and Class 28 - in 2009, Apple's lawyers decided iFone's Mexican Class 38 mark wasn't being actively used, and they filed a lawsuit to try and get it canceled so they could register their own pending Class 38 mark on "iPhone." - iFone obviously disagreed and convinced the Mexican courts that they were still using the mark in commerce Class 9 = computers, software, cameras, and mobile phone class 28 = electronic game devices Class 38 = communication services