In October 2018, WEIPR applied for the Ecuadorian letter trademark (hereinafter referred to as the applied trademark) on behalf of the central enterprise company A. In 2019, Apple Inc. of the United States submitted an opposition application, citing the trademark "IPHONE" as the basis for its opposition. Apple Inc. believes that the trademark applied for by Company A is phonetically and morphologically similar to the cited trademark, and that both have been applied for registration on identical or similar goods under Class 9. Given that the cited trademark is a world-renowned trademark, it is likely to cause confusion among consumers, thereby constituting trademark similarity. Therefore, Apple Inc. has raised an opposition to Company A's trademark application.
After discussions with foreign counsel, we believe that the application for the trademark does not infringe upon the prior trademark rights of the opposing party, Apple Inc., and that the opposition raised by the opposing party against the application lacks legal basis. The reasons are as follows:
1. The "PHONE" in the cited trademark "IPHONE" is a common word with relatively weak distinctiveness. Additionally, our company has conducted extensive case searches using the global trademark database and found that the cited trademark coexists with a third party's registered trademark "AIPHONE" on the same goods. This also demonstrates that the "PHONE" in the cited trademark has relatively weak distinctiveness and cannot prevent the registration of the applied-for trademark.
2. The main distinctive parts of the applied-for trademark and the cited trademark have obvious differences in terms of word composition. Furthermore, local consumers generally cannot effectively recognize foreign languages and cannot pronounce letter trademarks according to English pronunciation rules. The opposing party's argument that the trademarks are phonetically similar based on English pronunciation is unreasonable. Therefore, from an overall perspective, the applied-for trademark and the cited trademark are completely different and do not constitute similarity.
3. The high popularity of "IPHONE" is irrelevant to this case. The "PHONE" in the cited trademark belongs to the ninth category of generic terms, thus "IPHONE" cannot prevent the registration of the applied-for trademark in the ninth category.
We believe that the chances of a successful defense are high and recommends that the client actively participate in the defense proceedings to safeguard their own rights and interests. The client has adopted our advice and actively cooperated with the defense work, ultimately successfully registering the trademark in Ecuador in December 2022. The client believes that in fighting for their trademark rights and interests, they should not be afraid to compete with international giants and should adopt the professional advice of experienced firms.
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