A European trademark holder is taking Apple to court over the ‘iWatch‘, trademark name, despite the fact that the company has chosen to call it’s smartwatch the ‘Apple Watch.’
Probendi, a software development studio, is suing Apple for its use of 'iWatch' as a paid promotion Google AdWords term, which directs users to Apple's store page. Probendi owns the 'iWatch' trademark in Europe, and obtained the 'iWatch' trademark back in summer 2008, roughly a year after Apple brought its first iPhone to the market. According to reports, Probendi has filed a complaint in the Italian courts of Milan, June 26, that reads: “Apple has systematically used iWatch wording on Google search engine in order to direct customers to its own website, advertising Apple Watch.”
An audit commissioned by Probendi and conducted by Barzano & Zanardo, which specialises in copyright disputes, valued the iWatch trademark at €87m (£61m, $95m), Bloomberg reported.
Apple — of course — is no stranger to trademark disputes, Swatch even tried to block the iWatch name from entering the market because of its iSwatch. And, let’s not forget the 'iPad' naming lawsuit from the Chinese company Proview that owned the trademark ‘ipad’ to whom of which, Apple later was forced to pay $60 million to the compsny in order to obtain the rights to use the Apple iPad name in China. In South Amercica, Apple won the right to use the name "iPhone" in Brazil, after a 6-year-old battle over the trademark against the Brazilian company Gradiente, that first registered the word “iPhone” as a trademark in 2000. In, Mexico, Apple filed a lawsuit against iFone for trademark infringement, but lost the case because iFone registered their name in 2003, four years before Apple launched the iPhone, resulting in Apple losing the sole rights to trade using the iPhone brand name in that territory.
With regard to impeding issue between Apple & iwatch over Google's AdWords service, Fashion group LVMH, owner of the Louis Vuitton brand, won a similar case a few years back, which ruled it was allowed to protect its trademarks from being used as AdWords, without the consent of Google.
The decision ultimately means that companies should be cautious using rivals' trademarks for search advertising. There is no doubt that trademarks may be used as keywords, but following the courts decisions in Google v. Louis Vuitton above and their recent stance in Interflora v. Marks & Spencer, the use of a third-party trademark as a Google AdWords keyword is lawful only when there is no risk of consumer confusion about the origin of goods or services. In other words, provided that the advertisement allows the average internet user to determine that the goods or services originate from a third party unconnected to the trade mark proprietor.
The court will hear the iWatch case on 11 November.
Watch this space for more news.