In a reprieve to Apple, the Intellectual Property Appellate Board (IPAB) has dismissed a rectification application by Tamil Nadu-based iVoice Ventures, seeking removal of the former’s trademark that combines ‘iPhone word-mark with Apple logo’.
In a reprieve to Apple, the Intellectual Property Appellate Board (IPAB) has dismissed a rectification application by Tamil Nadu-based iVoice Ventures, seeking removal of the former’s trademark that combines ‘iPhone word-mark with Apple logo’. The IPAB bench of chairman Manmohan Singh and technical member-trademarks, Sanjeev Kumar Chaswal, ruled that the rectification plea by iVoice Ventures against Apple was frivolous and without any substance.
“It is filed only to embarrass Apple to effectively tarnish its reputation and business. Thus, we do not find merit in the application and dismiss the rectification proceedings filed against the mark,” the bench said.The bench has also ruled that it was of the considered opinion to declare trademark iPhone word ‘per se’ as well as its logo mark and the Apple logo as well-known trademarks. iVoice began sparring with Apple when the company’s trademark application for iFon, claiming adoption in 2007 for mobile phones, was opposed by the Apple, citing phonetic similarity with ‘iPhone’.
iVoice filed its counter to Apple’s petition in 2010 and moved the IPAB with a request for removal of the trademark, in 2013. To step up its counter further, iVoice filed a number of rectification applications against the US company’s trademark and the logo. Among them, one against the ‘iPhone’ trademark, was ruled by IPAB recently in favour of the Apple.
Claiming prior adoptation of its iFone mark, iVoice alleged that Apple was not the true proprietor of the mark ‘iPhone’. The trademark was originally coined and used in 1996 by Info gear Technology Corporation (Infogear) in respect of telephone and dial-up internet portal products. In 2000, Cisco systems acquired rights of the trademark ‘iPhone’ from Infogear and duly recorded the assigned rights before the USPTO, it said in its argument.
Opposing the rectification against the mark ‘iPhone with Apple logo’, Apple said that iPhone is a well-known mark on its own right, and obtained recognition as a famous mark by the tribunal. iVoice has challenged a mark that combines two of the most famous brands in the world and iVoice Venture’s claims are obviously completely meritless, it pointed out.
To the allegation that Apple formed a shell company, Ocean Telecom Services, and filed for registration of the mark iPhone in order to circumvent Cisco’s registration of the mark, Apple responded that it was very common that companies in order to keep launches of new products or services confidential, use shell companies for trademark filings. There was absolutely nothing illegal or unethical in filing for registration of a mark in the name of a shell company and upon the launch of the product, to assign the mark to the true proprietor, it said further.
According to documents filed before the IPAB, Apple first began using the Apple word-mark in 1976, the Apple logo in 1977 and had used each continuously since then. Over that period, Apple had extensively promoted, marketed, advertised, distributed and sold goods and services in connection with a family of trademarks consisting of the word Apple and the visual equivalent of the word, namely, a stylised Apple -the Apple logo. The Apple logo is an expression of the Apple word mark and because the Apple word mark and Apple logo have been used interchangeably, their distinctiveness and reputation in the minds of consumers are interlinked, the company said in an affidavit before the tribunal.