Archivo de la etiqueta: iWatch


applewatch - CopyTuesday September 9th was the day that follower of Apple’s hoopla looked forward to, as the company from Cupertino had, as customary, gotten folks the world over hooked on its ballyhoo (performance and release of album by U2 included) over the iPhone 6 and its wearable device, which everybody expected would be named as «iWatch», following the branding convention set since the iMac, the first iPhone, the iPod (which will now be laid to rest -apparently Apple finally conceded that its devices were overlapping-), the iPad, and the service platform attached to them, such as the desecrated (since the «#CelebGate») iCloud and even the «iForgot» password retrieval feature.

However this wearable device, the thing of science fiction less than 30 years ago (when the Dick Tracy film was released), did not follow that branding convention. The New York Times ran a piece on it today, and so did I over a year ago. It essentially boils down to a matter of intellectual property, more specifically of trademark prosecution: the Times reports that since Apple was about to launch its TV product and Steve Jobs hinted it might be called «iTV», the British broadcaster ITV PLC would oppose it. Apparently now Swatch followed suit and took preemptive measures with the trademark offices of the world to make it known that Apple’s attempts to brand this device as an «iWatch» could lead to confusion relative to their iSwatch product (registered with Mexico’s Trademark Office «IMPI» -you can look them up through their MARCANET service-) for products under NCL 14 (clocks and watches), 35 (advertising and retail sales thereof) as well as 37 (repair thereof),

In the case of Mexico, as noted in that post herein from July 4th, 2013 and reported by news journal Reforma, a third party filed to register iWatch in advance of Apple, and ultimately both ran into a prior registration granted in 2011 to an Italian company «I’m, SpA», which began selling its I’m Watch in 2013. And that has not been the only case in which Apple found such obstacles to the pursuit of its naming convention; since last year the press in Mexico reported extensively on the case that mobile carriers here lost against a Mexican company that had secured the registration for «iFone» since 2002, under which resolution hefty fines were assessed against all three then-major carriers but not against Apple, as iFone, S.A. de C.V., had secured said registration for the head-class of Telecomm Services (NCL 38), but apparently not for equipment therefor (NCL 9).

In sum this case illustrates quite clearly how challenging it can be for a global company to follow and implement a branding convention the world over. For sure a company can file for «preemptive» or «defensive» registrations, but unlike domain names trade and service marks cannot be stockpiled indefinetly; both US and Mexican trademark law provide for a term of 3 years for a registered trade or service mark to be effectively used in commerce, or otherwise registrations thereof may be cancelled. It may be difficult for design and development departments to meet with that time window in getting products or services to the market.

Also it often happens that legal and marketing don’t see eye-to-eye, and that is generally a matter of mindsets. Whereas MKT would love for its brands to be the top of mind of consumers in their market niche, for legal that would mean risking the loss of registrations thereof on account of such marks becoming generic, and that would result in loss of valuable intangible assets. This day in age its essential for MKT to regard legal as an allied and an enabler, and for legal to guide MKT through the intricacies and nuances of intellectual property law in a way that affords the company’s intangible assets the best protection possible.

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. 

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