IMPI rules again in favor of iFone
The Mexican Institute of Industrial Property (IMPI) ruled against three of Apple’s mobile phone carriers in Mexico, Telcel, Iusacell and Movistar, for infringing on the trademark of competitor iFone with regard to the commercialization of products with the iPhone trademark.
This case dates back to 2007, when Apple introduced the iPhone in Mexico and registered the trademark under class 9 of the Nice Classification: apparatus for recording, transmission or reproduction of sound or images, among others. By that time, a local software company had already registered the trademark iFone to cover telecommunication services for call centers and businesses under International Class 38. Apple sued iFone for trademark infringement, but IMPI dismissed the lawsuit.
In its recent ruling, IMPI stated that the two names are phonetically identical, and thus there was a trademark encroachment. However, it found that Apple’s iPhone trademark does not infringe the iFone trademark because it does not compete in the same market segment. Nevertheless, Apple’s mobile phone carriers do directly compete, so they were required to pay a monetary fine of about $104,000 and also given 15 days to remove any use of the word iPhone in marketing materials, since opposite to Apple (which only commercializes its mobile phones), they offer telecommunication services with the mark iPhone.
The telecommunications companies Telcel, Iusacell and Movistar have now the opportunity to appeal the IMPI’s decision before the Federal Court of Tax and Administrative Affairs, and then before the Federal Circuit Court.