After trademark dispute, Mexican carriers can no longer use ‘iPhone’ name in ads

iphone

Earlier this year, Apple (sort of) won a trademark lawsuit to Mexican telecommunications company iFone over the use of the phonetically-identical “iPhone” brand. The iFone trademark was originally filed in 2003, and in 2009 the company filed a suit against Apple. In March 2013 the case ended with the decision that Apple had in fact not infringed on the mark.

The logic behind the ruling was based on the difference in the two companies’ markets. While iFone sells telecommunications services, Apple sells smartphones (but not actual telecommunications service). Because of this, Apple would be allowed to continue using the name.

We say Apple only “sort of” won the case here, becuase unfortunately, the Cupertino company’s Mexican carrier partners were caught in the legal crossfire, as demonstrated by a ruling today that placed the burden of the infringement squarely on them [translation].

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Apple: iPad has become brandnomer for tablets, letting Proview use the moniker would hurt and confuse consumers

The iPad maker is defending its moniker by insisting the device became synonymous with both the company name and the tablets. PCWorld quotes Apple’s legal representatives who argued at the Guangdong Province Higher People’s Court hearing this morning that Apple made the iPad name famous in the first place:

Among consumers across the world, the iPad trademark is already uniquely connected with Apple. When consumers see a tablet with an iPad trademark, they know it comes from Apple, and not from another company.

No ruling occurred during the six-hour long hearing, and the judges adjourned without setting a new court date. Should Apple lose the appeal, Proview’s request to put a sales ban on the iPad in 30 Chinese cities will go-ahead. Moreover, Apple would risk lawsuits seeking damages. Last week, the Shanghai Pudong New Area People’s Court rejected a preliminary iPad sales injunction until the Guangdong court made its ruling on the appeal.

Apple’s argument might actually backfire, because its legal standoff with Proview has blown up. Wikipedia claims, “A trademark owner takes a risk in engaging in such a corrective campaign because the campaign may serve as an admission that the trademark is generic.” I am not a lawyer, but it seems obvious Apple might be calling upon itself long-term damage with this testimony.

Arguing that the iPad became a generic term for tablets theoretically means anyone could use it as a descriptor. Besides, why do you think Proview brought this battle to the United States? The opposite argument is that Apple actually owns the iPad name, and it is the only company marketing a product that became synonymous for tablets in the first place.

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The price of the iPad name in China has gone up to $2B

Chinese vendor Proview apparently owns rights to the iPad trademark in China, and it has two billion reasons not to honor its prior agreement with Apple as the Wall Street Journal cited a representative of Proview creditors who suggested compensation from Apple “could range as high as $2 billion,” which is up from the previous sum of $1.5 billion. Cash-strapped Proview recently filed for bankruptcy, so courts could interpret this as banks’ last-ditch effort to recoup their loans to Proview.

A Hong Kong court ruled last year that Apple’s agreement with Proview was valid, but that case is still pending on the Chinese mainland. Court documents uncovered by Dow Jones suggest on Dec. 23, 2009, Apple of California bought the rights to the iPad trademark from Proview in South Korea, Thailand, Singapore, and China for a paltry sum of about $55,494 in today’s dollars. Proview waived its right to sue for past infringements and passing off.

Proview said it still owns the trademark and maintains the deal did n0t include the China market. Another court in Mainland China sided with Proview, thus paving the way for a potential injunction on both the import and export of iPads. The world’s largest contract manufacturer, Foxconn, is exclusively manufacturing Apple’s tablet in China.

Proview chairperson Yang Rongshan said today: “If we are not compensated properly, then Apple doesn’t use the iPad trademark in mainland China.” Shenzhen-based Proview, once a well-known monitor vendor, claimed it started developing a product called the iPAD in 2000. iPAD stands for “Internet Personal Access Device.” So, what does Proview’s iPAD look like? Images are right after the break.

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Apple finally talks, says Proview refuses to honor agreement to transfer iPad trademark

Numerous online stores in China took the iPad off their shelves after Proview said Apple was breaking its trademark on the term “iPad.” The fight continues in court, but Apple released a statement today to China Daily about Proview’s allegations on Apple allegedly breaking the trademark.

“We bought Proview’s worldwide rights to the iPad trademark in 10 different countries several years ago. Proview refuses to honor their agreement with Apple, and a Hong Kong court has sided with Apple in this matter,” according to the statement, which also said the case is still pending on the Chinese mainland.”

Apple said it purchased Proview’s iPad trademark over several years ago in 10 different countries. Proview is refusing to transfer the trademark, but Hong Kong courts have already sided with Apple, according to the statement.

Many accuse the Mainland Chinese government of favoring local companies in these types of matters, so it may not be easy to clear this hurdle for Apple. Chinese customs already said the iPad is too powerful to be banned; although, Proview tried to block iPads from coming in or going out of China earlier this week.

Proview countered the Hong Kong situation:

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Apple tells Amazon China to pull iPads over Proview trademark dispute, customs say it’s too popular to be banned

A country-wide import and export ban on Apple’s iPad that ProView is pushing for over an ongoing litigation with the iPad moniker will not be easy to implement, or at least that is what Chinese customs officials told Reuters this morning. Chinese company ProView owns the “iPad” trademark and is petitioning Chinese customs to stop shipments of iPads in and out of the country.

Foxconn manufactures the iPads in Shenzhen, China, and such a ban would disrupt global iPad supply. Another result of the legal battle over the iPad name: At Apple’s request, online shopping websites Amazon China and Suning reportedly removed the iPad until the trademark dispute is resolved. Proview is hoping to extract an estimated $1.5 billion from Apple for the rights to use the iPad moniker in China.

The plan reportedly is not working as expected, because local customs think implementing a country-wide ban on such a successful and globally popular product would be impractical, to say the least. Moreover, customs authorities are unlikely to intervene in the trademark battle, or so the story has it. For its part, Proview insists it started developing a tablet called the iPad in 2000. The company’s boss Yang Long-san confirmed the latest development to the news gathering organization:

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Proview tries to block iPads from coming in or going out of China

Not content with officials yesterday confiscating iPads in Shijiazhuang over an ongoing litigation on the iPad moniker, Taiwanese company Proview Electronics is now looking to put a ban on both iPad imports and exports, according to Reuters. The company is already petitioning Chinese customs to stop shipments of iPads. Proview sued Apple last year over its “I-PAD” trademark and could seek up to $1.5 billion for the name from the Cupertino, Calif.-headquartered gadget powerhouse.

Apple is in an increasingly difficult place here. Considering every iPad is built in China (until Brazil plants go online), a full-blown export ban could disrupt the iPad business on a global scale. Proview’s legal position stems from Chinese laws that seek to prevent the sale of counterfeit goods in the country. The news gathering organization confirmed the development this morning:

A Chinese tech firm claiming to own the “iPad” trademark plans to seek a ban on shipments of Apple Inc’s computer tablets into and out of China, a lawyer for the company, Proview Technology (Shenzhen), said on Tuesday.

Proview also asked the country’s Administration Industry and Commerce to put in effect iPad confiscations in as much as 30 cities. Apple’s position in this dispute remains unchanged as a spokesperson re-iterated the official line:

We bought Proview’s worldwide rights to the iPad trademark in 10 different countries several years ago. Proview refuses to honor their agreement with Apple in China and a Hong Kong court has sided with Apple in this matter.

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