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December 15, 2018 Vol. 73 No. 21 Back to Bulletin Main Page

INDIA: iPHONE Deemed a Well-Known Trademark

Apple Inc.’s iPHONE was deemed a well-known trademark by the Indian Intellectual Property Appellate Board (IPAB) in the case of iVoice Ventures Private Ltd. v. Apple Inc. on October 15, 2018. ORA/151/2015/TM/DEL.

iVoice, a private limited company headquartered in India, disputed Apple’s registered trademark via an action for revocation of the mark.

iVoice contended that Apple’s ownership of the mark iPHONE was not true and bona fide because the word “IPHONE” was originally coined by Info Gear Technology Corporation (Infogear) with respect to telephones and dial-up Internet portal products. This mark was later acquired from Infogear by Cisco. Apple obtained the mark from Cisco via an undisclosed agreement. Apple stated that it was the prior adopter, user, and the registered proprietor of the mark iPHONE. It also stated that Cisco and Apple had settled their dispute over iPHONE
and had agreed (a decade earlier) that the use of this mark by both of them, for their respective goods and services was not likely to cause confusion or deception.

iVoice argued that, to circumvent Cisco’s rights over the impugned mark, Apple used shell companies such as Ocean Telecom Services LLC (Ocean Telecom) to file trademark applications in various countries. In India, other than its own application for registration of iPHONE in 2002, Apple Inc. holds a 2006 application for iPHONE, which was originally filed by Ocean Telecom, a company that merged into Apple Inc. in 2007. Apple stated that use of shell companies was a strategic business practice adopted by various companies to protect their marks prior to an official public launch.

The IPAB agreed with Apple’s response and stated that the issue with Cisco was not relevant to the current matter. The IPAB confirmed Apple’s rights in iPHONE and also held that iVoice could not dredge up an already settled issue. The IPAB also agreed that there was no legal restraint in registering trademarks through shell companies and later assigning them to parent companies. No costs were awarded against iVoice.

A similar dispute between the parties was decided by the IPAB in August 2018 in favor of Apple Inc. ORA/103/2013/TM/DEL/6830. In both these disputes, the IPAB observed that the actions by iVoice were false and frivolous.

Although every effort has been made to verify the accuracy of items in the 
INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position. 

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