IP Disputes in Intelligent Mobile

The landscape of IP disputes in intelligent mobile – from patent wars to trademark and design fights.

 

Apple Inc. soughttrademark registration in spring 2010 with the United States Patent and Trademark Office (USPTO) for a couple of 2-dimensional pictures depicting a mobile phone as well as a tablet. According to the descriptions of the marks, the marks consist of “a simplified drawing of a mobile digital electronic communications device.” Both marks were filed pursuant to Sections 1 (b) and 44(d) of the US Trademark Act, and accordingly, registration was applied based on intent to use the marks in commerce as well as based on foreign application. Color was not claimed as a feature of the marks. The marks were filed under International Class 009 which covers a ”Full line of electronic and mechanical parts and fittings for mobile phones and portable and handheld digital electronic devices”. 

Various oppositions against the registration

Following publication of the figurative marks in the Official Gazette, Nokia, Samsung, HTC, Dell and Acer filed various oppositions against the registration of either one or both of the marks with USPTO before the Trademark Trial and Appeal Board. The mobile device manufacturers opposed registration of the marks on several grounds. By way of example, the competing device manufacturers claimed that the marks were functional. Further, it was claimed that the marks merely constituted non-distinctive product configurations of the products of Apple.

In addition, Samsung argued that the marks are merely descriptive of the identified goods and thus not eligible for trademark registration. Namely, under Section (2)(e)(1) of the US Trademark Act, trademark shall be refused registration in case it consists of a mark which, when used on or in connection with the goods of the applicant, is merely descriptive of such goods.  

Apple filed answers to the notices of oppositions denying the allegations. In order to streamline the various oppositions, the parties agreed to consolidate all of the oppositions into one litigation, to the extent the cases involved common questions of law and fact. Thus, the consolidated cases could be presented on the same briefs. However, despite consolidation of the cases, each proceeding will retain its separate character. The Board ordered the opposers to file a single final brief on the merits in defense of opposers’ asserted claims in accordance with Trademark Rules, and set the trial dates for the consolidated proceedings. The opposition proceedings are still pending.

Registration of figurative 2D marks

The other well known device manufacturers Nokia, Samsung, HTC, Dell and Acer oppose the registration of either one or both of the figurative mark(s). Effectively, registration of the marks would mean that the competitors were prohibited from using the marks in advertising.

However, as the marks appear to depict merely the appearance of a product, they seem to be functional and descriptive. Thus, granting exclusive rights in said marks might result in an unreasonable outcome for the competing device manufacturers, who would like to use the same or similar marks in advertising their own products. 

In Europe, the Office of Harmonization of the Internal Markets (OHIM) has issued a Manual Concerning the Proceedings Before the Office. The Manual reflects the practice of OHIM in terms of registering community trademarks in Europe. The Manual provides that a mark is distinctive, if it can fulfill its essential function to guarantee the identity of the marked goods or services to the consumer by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.

Namely, a trade mark must be capable of distinguishing the goods or services concerned as originating from a particular undertaking. Under the Manual, the notion of distinctiveness is to be viewed from the stand point of the consumer. Accordingly, in order to register the image of a mobile phone and a tablet computer, consumers should be able to associate the marks specifically to Apple. However, the Manual states that figurative representations that are commonly used either in relation to the goods and services applied for, or as such, in a functional or descriptive manner, have to be refused.

According to the Manual, figurative marks showing a graphic representation of a naturalistic reproduction of the goods themselves are only eligible for registration under the same conditions as if they were filed as a 3-dimensional trade mark. For example, registration of the below figurative mark consisting of the 2-dimensional representation of a particularly positioned combination of two circles of different sizes as well as a rectangle on the face of a wristwatch, applied for goods in Class 14 (watches) was refused.

It seems that in light of the OHIM practice, the figurative 2-dimensional marks applied for registration by Apple, might not be eligible for trademark protection under the OHIM regime. As a matter of fact, Apple has tried to register similar marks also outside the United States, including with OHIM. For example, Apple filed an application (number 00610785) for community trademark (CTM) for the below figurative mark with OHIM in 2007. However, the application was refused.

Overlapping rights in intelligent mobile

As we know, design attracts attention. In advertising, attention is always the inherent challenge. When it comes to marketing, visual images provide advertisers with tools for persuasive communication – for catching the viewer’s eye. After all, when mobile devices become more and more sophisticated, the attention may shift from enforcement of patents to trademarks and designs in connection with intelligent mobile. Further, trademarks may be used for extending the protection secured by design rights.

Today, overlapping intellectual property rights are prevailing also in the telecom context. Various elements of mobile devices, such as hardware, software, but also the marks used in advertising as well as the design and appearance of the device – the wow factor eliciting the emotions and making the product stand out from the rest – are subject to various intellectual property rights. The inter twist is based upon the various protection forms available under trademarks, designs, patents, utility models, copyrights, just to mention a few, including even the protection under the rules governing trade secrets and unfair business practices.

However, when it comes to advertising, functional and descriptive elements of marks should still be preserved free for everyone’s use. We still stand for freedom.

 

Anna Haapanen
Master of Law (University of Helsinki)
Master of Law , Stone Scholar (Columbia University, New York)
Master of science (Hanken School of Economics)
Attorney at Roschier

 

Trademark applications mentioned above are available with pictures via USPTO’s and OHIM’s databases:

United States Patent and Trademark Office’s Trademark Eletronic Search System (TESS)

OHIM’s CTM-Online, RCD-Online, TMview and TMclass databases