Brett McGuire

Customers leave an Apple Store in San Francisco, California. (AFP Photo)

Brett McGuire: Apple’s Trouble With Trademarks

Apple may have a few problems when it launches its iPad in March. It turns out it hasn’t yet secured the trademark rights to the name of its latest must-have gadget.

Fujitsu has been using the iPad trademark since 2002. Its version of the iPad is a touchscreen computing device that helps shop clerks verify prices and check inventory data. The chances of anyone confusing the two products is fairly slim. Still, Fujitsu is claiming dibs on the trademark.

Ironically, Fujitsu is having its own problems trying to secure rights to the trademark. Its application was initially blocked by an earlier trademark application filed by a California information-technology security company, Mag-Tech. Now it seems that Fujitsu can add Apple’s new gadget to its trademark woes.

If all this sounds familiar, that’s because it is. Apple has a long history of trademark problems. In 2003, the Beatles’ record label, Apple Corp, sued it for breaching a trademark agreement signed 20 years earlier. After four years in court, the two companies negotiated an out-of-court settlement, but not before technology giant Cisco Systems launched a federal suit over Apple’s other must-have gadget, the iPhone.

Apple is quickly becoming a case study for what not to do about trademarks. The launch of the Macintosh, iTunes and the iPod have all been accompanied by trademark litigation.

While Apple’s latest trademark dispute is based in the United States, there are other iPad trademarks registered around the world. Siemens and lingerie designer Coconut Grove are but a few of the many companies with prior rights to the iPad name. Here in Indonesia, Taiwanese company Proview owns the trademark to the name. Like patents and designs, trademarks are territorial. Registering a trademark in one country does not guarantee the right to use the same trademark anywhere in the world.

This will mean work for Apple’s lawyers, who must figure out whether the iPad trademark is available around the world. This is not as difficult as you might think. When applying to register a trademark, the owner has to specify the goods or services it will be used for. There are 45 classes of goods and services for which a trademark can be registered. These classes operate like supermarket shopping aisles, grouping similar goods and services together. Just as shopping aisles make it easy for a customer to find what they want to buy, the trademark classification system makes it easy for applicants and the Trademark Office to register trademarks.

This means that at least some of the iPad trademarks that are already registered around the world won’t be a problem for Apple. Coconut Grove’s trademark, for example, is registered for padded bras — not exactly Apple’s core business. The same cannot be said of Proview’s Indonesian trademark, which is registered for a range of computer electronics, including touchscreens and notebook computers. This could make it difficult for Apple to secure the rights to use iPad in Indonesia.

The good news is that Proview doesn’t make its iPad anymore, which leaves Apple with two options: negotiate a co-existence agreement with Proview, or challenge the trademark in court. In court, Apple would have to prove that Proview has not used the trademark for three years. There are many ways to prove non-use. A tactic that is sometimes successful is to get the trademark owner to admit that they do not use the trademark by placing an order or asking them to confirm in writing whether they distribute in Indonesia. The cautious approach is to carry out market surveys in key population centers and present them to the court as evidence that the trademark owner is not using its trademark. However, market surveys alone are not conclusive. Proving a trademark is not used in Jakarta does not mean it is not used in Indonesia at all.

All the more reason to register your trademarks before announcing your latest product.



Brett McGuire is a consultant for Rouse. His Web site is HAKItree.com/brettmcguire

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