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29 Mar 2018

“Steve Jobs”: whose name is it anyway?

Multiple news portals [1] recently carried a rather bizarre but interesting trademark news. They quoted an Italian newspaper report that two Italian brothers had won a trademark case against Apple Inc. over the mark “Steve Jobs” before the European Union Intellectual Property Office (EUIPO).

It appears from the EUIPO database[2]   that Mr. Vincenzo Barbato, an Italian national, had filed two trademark applications (nos. 011687316 and 011041861) for the marks “Steve Jobs” (word mark) and “(figurative  mark consisting of the text “STEVE JOBS” above which there is a logo composed of a customised “J”) respectively. These applications, filed in 2013 under several classes of goods & services including class 03, 09, 14, 18 25, 38 and 42, were given registration in 2013 and 2014 respectively.

Interestingly, the word mark (“Steve Jobs”) did not face any issue and was registered in the EU within a few months of filing. Subsequently, it was also filed under Madrid Protocol (international application no. 1190586) with designation of several countries[3] including China, India, Japan, Korea, Russia and USA. It appears from the Madrid database that most of these countries have in fact refused the registration.

The figurative mark  , on the other hand, ran into trouble in the EU, where Apple Inc. opposed its registration on grounds of “Likelihood of confusion Unfair advantage /detriment to distinctiveness or repute Earlier non-registered TM & right to prohibit use of later TM under national law Earlier sign & right to prohibit use of later TM under national law”. However, the applicant won the opposition since EUIPO ruled that the letter ‘J’ isn’t edible and therefore, the bite could not be ripping off Apple’s own iconic logo. EUIPO upheld the trademark [4] and therefore allowed the registration ruling against Apple Inc.

The newspaper quoted the applicant and his brother (who are business partners in a fashion design business), stating that they plan to start a Clothing and Accessories company under said brands. They also plan to launch electronics products including mobile phones under “Steve Jobs” brand. I wish not to imagine a situation where “Steve Jobs” mobile phones competing with “Apple’s iphone” in the market.

I leave it to European attorneys to provide their comments on this case and European legislation governing registration of a personal (celebrity) name. However, it does appear that more applications are being filed for the mark “Steve Jobs” in the EU and other countries under various classes which if granted would not be a good and fair Trademark practice.

Legal Position in India

India, which follows the common law system, is pretty clear on the subject. As per Section 14 of the Trademark Act, 1999[5]; a trademark application for registration of a mark which falsely suggests a connection with any living person or a person who has died within the past 20 years, may be refused if the applicant is unable to provide a written consent of the concerned living person or the legal representative of the deceased person.

This provision appears to be straightforward and prohibits unfair registration of personal names and representations. This makes it easy for celebrities and persons of repute to protect their personal names and identities without really registering their names. This is unlike in the US and some other countries where celebrities are required to register their names under various classes to protect their names and the goodwill attached thereto.

Conclusion

Even though Apple Inc. has lost the opposition, I do not believe that is the end of the road. I hope they would not let anyone register/use an identical/similar mark so easily, as this would definitely cause an irreparable damage to them. Perhaps, it is Steve Job’s legal heirs who should be the ones registering and using his name in commerce and contesting registration/use by any third party.  Since multiple applications for registration of the mark “Steve Jobs” are being filed worldwide, it would be interesting to see how different jurisdictions handle these cases.  

[1] http://www.thefashionlaw.com/home/the-steve-jobs-trademark-battle-in-italy-ends-in-a-loss-for-apple

[2] www.tmdn.org

[3] http://www.wipo.int/madrid/monitor/en/

[4] http://www.firstpost.com/tech/news-analysis/steve-jobs-is-now-the-trademarked-name-of-an-italian-clothing-company-4280447.html

[5] Section 14: “Use of names and representations of living persons or persons recently dead.—Where an application is made for the registration of a trade mark which falsely suggests a connection with any living person, or a person whose death took place within twenty years prior to the date of application for registration of the trade mark, the Registrar may, before he proceeds with the application, require the applicant to furnish him with the consent in writing of such living person or, as the case may be, of the legal representative of the deceased person to the connection appearing on the trade mark, and may refuse to proceed with the application unless the applicant furnishes the registrar with such consent.”

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