Yet Another Challenge for Apple’s Trademark Prosecution in Mexico

An entry in  this blog on America’s birthday would be quite fitting in English and about news on one of the tech giants of the USA: Apple, Inc., of Cupertino, CA.

Over the past few days US papers and Mexican domestic media have been raving about how, following a rather predictable branding plan, Apple filed for registration of the iWatch trademark in a number of countries, including our own (IMPI file number 1379250 and 1379251), through none less than the prestigious IP law firm of Arochi, Marroquin & Lindner. However those applications may stumble upon a block on this turf.

News journal Reforma found that the firm of Del Carpio, Covarrubias y Pedraza had filed applications (IMPI file numbers 1348208 and 1348209) for the same trademark in the same classes (9 and 14 of the Nize classification) on behalf of «…a group of Mexican entrepreneurs…» in advance of Apple, which will raise expectations in the IP arena as to how the tech giant’s application will fare, all the more so given the precedent that earlier this year Apple lost in its attempt to register the iPhone brand to a Mexican telecomm company iFone.

Starting in 2009, Apple fought it out with iFone over the registration of the brand for its leading smartphone product over the former’s trademark registration, dating back to 2003. Ultimately this year the tech juggernaut succumbed when the Mexican Supreme Court of Justice ruled  against it in a claim filed by iFone to counter the «amparo directo en revisión» suit that Apple had filed against the prior ruling aginst it to annul the registration secured by the former. That particular case was won by Eduardo Gallástegui, partner with the firm of Holland&Knight in Mexico City. 

The results of the case have been since felt in the increased cost of Apple’s handsets; whereas in order to lure users into onerous fixed-term boilerplate service contracts carriers in Mexico would commonly factor the cost of the iPhone into the rent for mobile lines offered and market them as «free», they no longer due and subscribers must now foot an additional amount for the cost of the handset.

Mexico was not the only jurisdiction where Apple met with obstacles to secure its iPhone brand’s registration; it had a similar experience in Brazil, where a local company had prosecuted that trademark since the year 2000 and ultimately received it in 2007.

Trademark prosecution in Mexico differs from that in the USA; for example, there is no opposition period here. And granted, whereas Apple´s application came in until July 3rd, the captioned prior registration was filed on February of this year, around the time that the Madrid Protocol entered into force in Mexico, so that Apple could not have secured an International Registration of its trademark here through an application in another member country. But one such application in another member country of the Paris Convention would have facilitated priority for 6 months over a local filing; whereas the prior filing in Mexico only states November 11th, 2012 as the date of first use of the trademark, Apple’s claims piority based on an application filed in Jamaica on December 3rd, 2012.

At this point the field of intellectual property in Mexico can only speculate how this will fare in practice, whether in board rooms, before the Mexican Institute of Intellectual Property or in court. But be as it may, the matter begs the question as to how long in advance of its R&D should a company with such a clearly (and obviously) defined branding strategy (or trend) start prosecuting it trademarks.