Apple Trademark Application Trouble in Mexico

trademark registrationYou may have read our earlier blog post about Apple’s trademark troubles in Brazil.  In Brazil, a company called Gradiente beat Apple to the Brazilian trademark office and registered the name iPhone long before Apple released their mega-hit mobile phone.  Because Gradiente was the first to obtain a trademark registration, they are entitled to exclude Apple from using the “iphone” mark in Brazil. Since we last wrote about this story, Apple has been able to bring its considerable resources to bear and the two companies are currently in negotiations over a deal that would allow Apple to use the brand in Brazil. But just when Apple appears to be resolving that problem, a new issue has emerged for Apple’s trademark attorneys in Latin America.

Apple filed a trademark application in Mexico for the term iPhone in several categories. One of the categories was international class 38 covering telecommunication services. Initially Apple was rejected in this class because of a likelihood of confusion with a Mexican company called iFone. iFone (i.e., Gradiente) specializes in server-based telecommunications systems and filed a trademark registration in Mexico in 2003. Following this rejection, Apple’s trademark attorneys argued that iFone wasn’t actively using the mark and should be stripped of their trademark rights, which would allow Apple to overcome the likelihood of confusion rejection and obtain a trademark registration. This appeal recently went to the Mexican Supreme Court which ruled against Apple stating that Gradiente had made sufficient use of the iFone mark and denied Apple a trademark registration for the iPhone mark in the field of telecommunications systems.

Although this ruling does not necessarily mean that Apple won’t be able to sell or call their devices iPhones in Mexico– Apple has Mexican trademark registrations in two other classes, 9 and 28, covering computers, software, cameras, mobile phones and electronic game devices respectively – it does mean that iFone can probably block Apple from using iPhone in reference to telecommunication services in Mexico. This could be problematic for Apple, because even though Apple does not offer telecommunication services, the iPhone has significant overlap in this market. Apple will have to be careful how it markets the iPhone in Mexico or risk being sued by iFone for trademark infringement. You can probably expect iFone’s trademark attorneys to be keeping watch.

Apple’s Mexican blues illustrate the numerous considerations that accompany a trademark application, including whether acquisition of foreign rights is important, which class or classes to file in and how to make trademark use of the mark. It also illustrates the importance to having trademark attorneys conduct a thorough trademark search. A skilled trademark attorney can help you make the most of your trademark registration.

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