By Mariano Municoy, Guest Blogger
Following Apple’s problems in Mexico and Brazil related to the registration of the mark “iPhone,” in April an Argentine Tribunal of second instance upheld a judicial decision holding that the opposition filed by the owner of the Argentine registration for the word mark “WORK” claiming certain products of Class 9 against Apple´s application for “iWORK” in the same class was not undue or meritless given that both terms were confusingly similar.
As a background to this case, it is worth pointing out that the Argentine PTO (INPI) database shows that an Argentine individual filed an application for the mark “WORK” in Class 9 in 1993. That application, renewed in 2012, claimed only “teaching apparatus and instruments, automatic sales apparatus that function through the introduction of coins or tokens, cash register, machines for calculating and controlling (sic) and computers of general data.” Moreover, INPI’s database shows that on August 6, 2004, Apple filed an application for the word mark “iWORK” in Class 9, which was opposed by the mentioned individual based on his mark “WORK.”
According to the April 23 decision issued by the Chamber III of the Federal Appellate Tribunal on Civil and Commercial Matters, the enormous level of fame and recognition of the Apple brand was of no help to repel the opposition of the owner of WORK because the dispute was related to the signs “WORK” and “iWORK” without any further reference to Apple in the most recent Apple application.
Moreover, the Tribunal noted that the information gathered during the process resulted in no proof that Apple had commercialized a product using the sign “iWORK” although it was found that sales started in 2004 when the company filed its trademark application. This is not surprising given that this mark is applied to software sold online by Apple. It seems that proving some kind of commercialization of the products in Argentina could not have helped Apple much because Argentine trademark law follows a “first to file” system, as most countries worldwide do (except for the U.S., and a few others). Thus, although the use of unregistered marks (called “de facto marks”) has been increasingly recognized as a source of legal protection by Argentine judges, this trend is limited and does not result in giving priority to a junior “de facto” mark over a senior owner of an identical registered mark.
Furthermore, the judges mentioned that the argument about the lack of any proof supporting any “concrete economic activity” of the opposing individual owing the sign “WORK” was introduced too late into the judicial process, which sounds like closing the door to bring a cancellation action as a counterclaim. The Tribunal gave the same consideration to the argument on the limited scope of protection of the registration, which sounds like Apple argued that the goods of each marks were different and therefore no confusion among consumers would follow.
It is worth clarifying that under Argentinean trademark law the procedure to handle oppositions follows these steps: 1) The opposing and opposed parties have one year to privately negotiate the withdrawal of the opposition; 2) If no agreement is reached by the parties, the opposed party must file a legal action against the opposing party arguing the lack of merits of the opposition with the Federal Court on Civil and Commercial Matters; otherwise, the application filed by the opposed party would be considered abandoned; and 3) Before the judicial proceedings start, the opposed party must serve the defendant to attend a mandatory mediation procedure, which usually, but not always, results in the settlement of the case.
We hope this helps you understand the importance of preparing in the best possible way and setting up a sound legal strategy before starting a mediation where the claims to be litigated must be fully introduced by both parties.
Now it seems that Apple may end up needing to buy the mark “WORK” without any known use of it by its owner. This is possible in Argentina (and most countries other than the U.S.), where no affidavit proving use of the registered mark must be submitted to maintain or renew it. The only instrument to remove “deadwood” records is waiting for a third party to file a cancellation action for non-use of the mark.
As a final note, it is interesting that, perhaps due to the opposition analyzed herein, in May 2009, Apple filed applications for the word “iWORK” in Classes 38 and 42 that matured into registrations. Also, on May 5, 2012, Apple filed again for the mark “iWORK” in Class 9, but excluded the products covered by the mark “WORK” already mentioned.
From all of the facts, it is possible to infer that Apple may be trying to get a registration for “iWORK” in Class 9 that would not conflict with the mark “WORK” and also in other related classes that would allow it to use the mark without infringing the rights of the defendant in this case. This strategy would have to be tested in the courts, so we will keep an eye on these matters and report back on them in the future.
Mariano Municoy works for the Latin American IP law firm Moeller IP Advisorswhere he advises and designs legal strategies related to patents, trademarks, and domain name protection, as well as anti-counterfeiting and transfer of technology issues. Mr. Municoy is also a founding member of Moeller’s Regional Department of Regulatory Affairs and serves as a liaison between Moeller and numerous U.S. companies and law firms. Finally, he is an IP adjunct professor at Universidad Austral (Argentina) and Chicago-Kent College of Law (USA).