If you want to know what products a company like Apple plans to launch, trademark filings can be a good way to find out because anyone can search them. Apple’s registration of the trademark ‘Apple Watch’ was a bit of a giveaway, for example.
But there is one way tech companies can keep them secret for the first six months, and it’s a method Apple has used no fewer than 343 times: taking advantage of section 44(d) of the US Trademark Act …
As reported earlier, Apple CEO Tim Cook is visiting Beijing, China this week. The earlier Reuters report suggested Cook was intending to talk with government officials about company matters amidst increasing tensions between the country and Apple, following trademark disputes and the ban on iTunes Movies and iBooks content.
On Monday, though, Cook met with Chinese app developers at an Apple Store. The talk was hosted by Jean Lui, president of taxi company Didi Chuxing, of which Apple has invested $1 billion dollars. A plethora of Chinese app publishers were in attendance, including a Groupon-esque clone ‘Meituan’, photo app MeituPic, news provider Toutia.com, cooking app DayDayCook and game developer Tap4Fun (via CNBC).
In a statement, Apple has said that it will appeal a Chinese trademark ruling which saw the company lose exclusive rights to the iPhone name, allowing other Chinese companies to use the name for leather goods products. Obviously, the iPhone is Apple’s cash cow so the initial ruling was a big blow allowing legal dilution of its most-valuable brand.
Apple will take the appeal to the Supreme People’s court, the highest court in the Chinese law system …
Apple has lost the right to the exclusive name of the iPhone trademark in China after the Beijing Municipal High People’s Court ruled against the company. Apple retains the right to the trademark for electronic goods, but a local company that has been using the name for leather goods remains able to do so.
The ruling was reported by Legal Daily, which the BBC says ‘is widely recognised as the official mouthpiece for the country’s Central Political and Legal Affairs Commission.’
The trademark dispute over the iPhone trademark has been a long-running one in the country …
The Delhi High Court has ordered Apple to cease all use of the term ‘Split View‘ within India as a local software company claims to own the trademark for the name ‘SplitView’ (without a space). ET Tech reports that Apple has appealed the ruling, and a final decision is expected in May.
It’s been a while since Apple used its ‘Think Different‘ slogan. Launched with a one-minute TV ad in 1997 when Apple was trying to persuade people to buy a Macintosh instead of an IBM PC, it hasn’t been used since 2002.
But Patently Apple notes that the company has expanded the European trademark filing to cover seven new product classes.
Apple’s International Classes for ‘Think Different’ have greatly expanded from one class to eight. The classes now cover Apple Watch (Horological and chronometric instruments; watches), Apple Pay (financial services); Apple Pencil, iPad, (computers, stylus), games, business management, subscription services, telecommunications, broadcasting, music, television, educational services and Siri (maintenance of proprietary computer software in the field of natural language, speech, speaker, language, voice recognition, and voice-print recognition) …
Swatch, apparently threatened by Apple’s recent forays into watchmaking, has taken another legal step seemingly aimed at tweaking Cupertino: registration of two “One More Thing” trademarks, a catch phrase famously associated with former Apple CEO Steve Jobs’ keynote speeches. Expand Expanding Close
An Australian court has rejected Apple’s appeal against the country’s refusal to allow it to trademark the term ‘App Store,’ reports the Sydney Morning Herald.
The Registrar of Trade Marks refused registration of Apple’s “app store” trademark in March last year because it was too descriptive. Apple then appealed this decision in the Federal Court.
On Wednesday, Justice Yates ruled that Apple’s appeal be dismissed and that it pay the court costs of the Registrar of Trade Marks.
The ruling means that Apple is free to continue to use the name, but it cannot prevent other companies from doing the same. The court ruled that consumers understood that the term App Store referred to any online source of apps for any platform, and therefore there was no danger of consumers being misled into thinking they were buying apps from Apple.
In the US, Apple originally sued both Microsoft and Amazon over their use of the term back in 2011, which Apple claimed as a trademark and had used since 2008. Amazon responded by arguing that even Steve Jobs and Tim Cook had used the term generically, and a court dismissed the false advertising element of Apple’s claim while allowing the trademark portion of the case to proceed.
The two companies were then ordered to conduct settlement talks, during which Apple agreed to drop the case on the basis that its own app store was by then so successful that there was no risk of confusion – leaving it unclear why Apple continued to fight the case in Australia.
Back in June Apple faced off against a Mexican telecom over the trademarked word “iFone.” In that case, the iFone telecommunications company argued that Apple had infringed its trademark with the iPhone. A court ruled that because telecom services and telephone hardware aren’t the same product, there should be no confusion among consumers about which is which.
Unfortunately for mobile carriers in the country, because they do offer telecommunications services, they were barred from using the name “iPhone” in marketing materials.
Now an Indian mobile phone manufacturer called iVoice Enterprises Limited is taking Apple to task over a similarly named product, this time called the “iFon.”
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].
BBC reported today that Apple was recently denied a trademark for “iPad mini” after authorities in the United States claimed the term was “merely descriptive.” Apple still has until July to convince the United States Patent and Trademark Office, but its official stance thus far according to a recently surfaced document is that iPad mini fails to “create a unique, incongruous, or non-descriptive meaning in relation to the goods being small handheld mobile devices comprising tablet computers capable of providing internet access.” In other words, “mini” simply describes a variation of the device, rather than a unique feature that differentiates it from the full-sized iPad.
An excerpt from the USPTO document:
The term “IPAD” is descriptive when applied to applicant’s goods because the prefix “I” denotes “internet.” According to the attached evidence, the letter “i” or “I” used as a prefix and would be understood by the purchasing public to refer to the Internet when used in relation to Internet-related products or services. Applicant’s goods are identified as “capable of providing access to the Internet”.
The term “PAD” is also descriptive of the applied for goods. The term “pad” refers to a “pad computer” or “internet pad device”, terms used synonymously to refer to tablet computers, or “a complete computer contained in a touch screen.” Please see the attached dictionary definition. In addition, the attached excerpts from third party websites show descriptive use of the term “pad” in connection with tablet computers. This marketplace evidence shows that the term “pad” would be perceived by consumers as descriptive of “pad computers” with internet and interactive capability. Applicant’s goods are identified as “a handheld digital mobile electronic device comprising tablet computer”.
The term “MINI” in the applied for mark is also descriptive of a feature of applicant’s product. Specifically, the attached evidence shows this wording means “something that is distinctively smaller than other members of its type or class”. See attached definition. The word “mini” has been held merely descriptive of goods that are produced and sold in miniature form.
The main request by the USPTO is that Apple added a disclaimer clarifying that it is only seeking the exclusive right to “MINI” as part of the entire iPad trademark. That would prevent claiming exclusive rights to the word mini, which the USPTO noted, “others may need to use to describe or show their goods or services in the marketplace.”
This isn’t the first time that Apple has run into hurdles related to its iPad trademark. It previously fought cases in both California and China with companies claiming to own rights to the iPad name.
Following a court dismissal of Apple’s false advertising claims against Amazon earlier this month as part of the ongoing “App Store” trademark lawsuit, Bloomberg reported last night that a court has now ordered the two companies to hold settlement talks ahead of trial. A trial in the lawsuit is slated for August 2013, while U.S. Magistrate Judge Elizabeth Laporte yesterday requested the two sides attempt to settle the case on March 21, 2013:
U.S. Magistrate Judge Elizabeth Laporte in San Francisco directed the companies to confer on March 21 and to bring their lead attorneys and people who have full authority to negotiate and settle the case, according to a court filing today. … Apple is seeking a court order to block Amazon from using the term Appstore in its service to sell software for devices running Google Inc. (GOOG)’s Android operating system. Apple alleges the online retailer infringes its trademark and violates unfair competition laws.
In order to get its new Lightning technology out on the market, Apple had to acquire the trademark “Lightning” from the popular motorcycle maker Harley-Davidson. According to Patently Apple, two trademark applications published on Sunday by the EU Patent and Trademark Office show the transfer of the trademark officially went down on Saturday. The term “Lightning” is still protected until 2013 under the original filing, and Harley-Davidson still owns some rights to the term. Still having access more than likely gives the Motorcycle manufacturer the right to use Lightning on some of its products, which includes helmets and electrical parts, while Apple also has free reign. It seems somewhat odd that a term like “Lightning” can be trademarked. [Patently Apple via Gizmodo]
Apple’s ongoing fight to get control of the iPhone brand in Mexico is running into a bit of trouble, with El Universal and Electronista reporting today that a Mexican court denied “Apple’s injunction request on the grounds that the iPhone brand is too phonetically similar to iFone.” The iFone brand is owned by a Mexican telecommunications company that apparently registered its trademark in 2003—four years before Apple:
Apple has lost an injunction bid that would have allowed it to continue selling iPhone-branded products in Mexico…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… Apple sought unsuccessfully to gain sole control over the brand in the year after the iPhone first launched in Mexico.
It’s a possibility this could change Apple’s plans to launch the iPhone 5 this Friday on a number of Mexican carriers, but it’s more likely the company will appeal the decision or reach a settlement with iFone. We’ll update you when we learn more.
A report by Sina (via the Beijing Times/TNW) claims that Apple offered $16 million as a settlement for the iPad trademark in China, which Apple was duped out of prior to the product’s 2010 launch. Apple bought the Chinese trademark using secret subsidiary IPAD, but the Taiwanese arm of Proview had no right to sell it, because it was a separate entity from the Chinese company that owned rights to “IPAD” in China.
Proview China is now in bankruptcy to the tune of $63 million to Chinese banks and others; so $16 million is a long way from bringing it back from the dead. However, the creditors may choose to take what they can get.
By the way, the new iPad is conspicuously late to China—with some even wondering if it is because of the trademark dispute.
According to a report fromBloomberg, Apple offered to settle with Chinese company Proview after a long, ongoing battle over the iPad trademark in China. While the amount of compensation offered was not disclosed, Proview’s lawyers have not agreed to the deal and claim a “big gap’ remains in reaching a settlement.
Recently, there was speculation that the trademark battle might have led to Apple holding off from launching the new iPad in the country. The case and negotiation process will continue at the Higher People’s Court of Guangdong, while separate complaints filed by Proview in February will seek compensation for alleged infringement of IP laws in the country.
In an interview with Xinhua on Sunday, Proview’s lawyer Xie Xianghui was positive negotiations were progressing:
“We feel that the attitude of Apple Inc. has changed. Although they expressed that they were willing to negotiate, they have never taken any action before. But now, they are having conversations with us, and we have begun to consult on the case.”
Tim Cook, Apple COO, in january 2009, after Macworld Expo keynote. Picture by Valery Marchive (LeMagIT) (Photo credit: Wikipedia)
Forbes brings up the point that Apple may have snubbed China in its new iPad launch plans over the iPad trademark lawsuit it is fighting with Proview. While there are many other factors likely in play —like logistics—it certainly would not be out of character for Apple. Plus, Apple gets to sell them cheaper in Hong Kong anyway.
Apple’s Chief Executive Officer Tim Cook recently toured China and met Chinese officials about issues concerning trademark and copyright infringement, which seems to overwhelmingly favor China.
The iPad maker is defending its moniker by insisting the device became synonymous with both the company name and the tablets. PCWorldquotes 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.
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 Journalcited 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.
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.
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 toldReuters 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:
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 toReuters. 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.
As Penn Olson pointed out, the confiscations are in one city and so far just on third-party retailers. However, the action forced other retailers to take iPads off the shelves, though they can still be purchased if asked for. However, this latest action might be a sign of things to come…
