We use cookies to make your experience of our website better. Some of these are set by third party Google Analytics to help us analyse website traffic. To comply with privacy regulations, we require your consent to set these cookies. If you continue to use the site without selecting an option we will assume you are happy for us to use cookies.

Another Bite Of The Apple

Another Bite Of The Apple

As the Brazilian patent authority rules against Apple in a recent trade mark dispute involving the name “iphone”, we consider the risk of a registered trade mark being revoked through non-use.

Registering a trade mark is fairly straightforward, though will not be permitted (or is susceptible to challenge) if it conflicts with earlier registered or unregistered rights of a third party.  However, registration does not provide the rights holder with an indefinite and unfettered right to use that mark.  Typically, and as is the case in the UK, registration of a trade mark lasts for ten years, after which it can be renewed.

Registration does not always guarantee that the rights in a trade mark will subsist.  In the UK, a registered trade mark is vulnerable to challenge if, within a period of five years following the date of registration, it has not been put to genuine use by the registered owner (or with his consent), in relation to the goods or services for which it is registered, and there are no proper reasons for non-use of the mark.

In Apple’s case, they brought a challenge against Gradient Eletronica, a Brazilian based smart phone manufacturer.  Gradient made an application to register the trade mark for “iphone” in Brazil in 2000 (well before the inception of Apple’s version of the phone in 2007).  Gradient’s trade mark was then registered in 2008.  Apple’s challenge was based on a claim that Gradient had not made use of the “iphone” name until December 2012.  They argued that Gradient had lost its rights in the mark as a result of their not having utilised it during that time.

Rather surprisingly, Brazil's Institute of Industrial Property (INPI) rejected Apple’s application to register “iPhone” in respect of handsets in Brazil, ruling that Gradient had existing exclusive rights in the mark for that category of goods.  Apple did manage to successfully register the name in a number of other classes, such as software development and advertising (categories in which there were no existing third party rights).

The authority’s ruling merely confirms Gradient’s rights in the mark.  Preventing Apple’s use of the mark in Brazil is outwith its powers.  Any challenge to Apple’s use of the mark must be made in the form of court proceedings brought by Gradient.  However, it is most likely that the parties will reach agreement on the use of the name, with Gradient’s chairman recently commenting: "we're open to a dialogue for anything, anytime... we're not radicals".  If Gradient were well advised, they would ensure they make the most of their strong bargaining position.

Although an unexpected result, this case highlights the risk to rights holders that mere registration is not always enough.  The mark must be used genuinely in order for those rights to continue, or the privilege may be lost.  The difficulty then comes in establishing what is “genuine use” of a trade mark.

The courts have made clear that “genuine use” is such that the mark is used in a commercial sense in a way which guarantees the mark as a badge of origin for goods or services for which the mark is registered.  Whether genuine use can be established will depend on the circumstances of  each case.  What is clear, however, is that minimal use of the mark in an attempt to simply preserve the right will not be enough.

Louisa Mann
solicitor

LChalmers