V.P. Balaji vs Apple, Inc. And Ors.

Manmohan Singh, J

The present rectification petition for removal of trade mark ""IPHONE"" registered under No. 1144193 in the name of ""Apple, Inc"" trading at 1

Infinite Loop Cupertino, California 95014, U.S.A in Class 09 has been filed by Shri V.P. Balaji trading as I Voice Enterprises, No. 17/3, Akil Medu,

6th Street, Erode-63800, Tamil Nadu. The petitioner adopted the trademark ""iFon"" in the year 2007 for Mobile Phones/cellular phones and filed

trademark application under no. 1556676 in class 09. The trademark ""iFon"" was opposed by the respondent No. 1 under MAS - 736818. The petitioner

claims that he is aggrieved party to file the present petition.

It is alleged by the petitioner that during said proceedings, the petitioner did intensive legal research about the proprietary rights and locus standi of

the respondent no. 1 for their alleged trademark ""iPhone"" and from said research, it found that the respondent no, 1 is not the proprietor of the mark

iPhone"" which is now registered and subject matter of present rectification in order to stress its stand that the respondent no. 1 is not the proprietor of

trade mark iPhone, it is stated that the trademark ""IPHONE"" was originally coined and conceived as early as in the year 1996 by Infogear Technology

Corporation (Infogear) in respect to telephone and dial-up internet portal products. It was registered before USPTO in the year 1999 and an

application for registration of the trademark ""IPHONE"" in India in class 9 under no. 906648 was filed before Trademarks Registry, India.

The petitioner has referred the various paras of his pleadings in order to establish its plea. The details are given as under:-

a) In the year 2000, Cisco systems LLC (Cisco) acquired rights of the trademark ""IPHONE"" from Infogear and duly recorded the assigned rights

before the USPTO. From thereon, CISCO Systems was using the trademark ""IPHONE"". Therefore, the early adoption, ownership and use of the

trademark ""IPHONE"" by Infogear and subsequent adoption of CISCO is well within the knowledge of the respondent no. 1 and it was even stated

that the respondent no. 1 recurrently approached CISCO, since 2001 for transfer of rights but such request was refused by CISCO.

b) It is submitted that, the respondent no. 1 formed a shell company called ""Ocean Telecom Services LLC"" (Ocean Telecom) to squat and circumvent

the rights of CISCO in the trademark ""IPHONE"". The nexus between the respondent No. 1 and Ocean Telecom is revealed from the fact that Mr.

Thomas La Perle, Director, Legal of Respondent Company was the signing authority for both the Companies. The Apple relied on Ocean Telecom's

Trinidad and Tobago application no. 37090 for the ""IPHONE"" trademark application filed in Australia in 2006 to claim international priority.

c) The shell company ""Ocean Telecom Services LLC"" was formed by the respondent no. 1 for no purpose but to file trademark ""IPHONE"" in almost

all the countries in the world. The convention application of iPhone"" filed before USPTO by Ocean Telecom was objected citing the reasons pre-

existing rights of CISCO and under section 44(d) and 44(e) of the US Trademark Law.

d) In the year, 09.01.2007 the respondent No. 1 announced the launch of their product of mobile ""iPhone"" on and the very next day on 10.01.2007

Cisco Systems LLC filed a suit against the respondent No. 1. Ironically, the respondent no. 1 chose not to contest but settled the lawsuit based on an

undisclosed agreement with CISCO. The respondent no. 1 was able to register the trademark ""iPhone"" in USA only on 18.08.2009 after submitting the

consent agreement from CISCO before USPTO.

e) It is stated by the petitioner that the registered trademark ""iPhone"" in 1144193 was filed in the year 2002 by the respondent no. 1 without having any

proprietary rights since the same was originally owned by Infogear and subsequently assigned to CISCO in USA. The proprietorship of Infogear

Technologies and CISCO and the respondent no. 1 could not possibly claim that they have no knowledge about the same. The respondent did not

respond to the above contention of petitioner but remained dormant in their counter statement.

f) It is submitted that the respondent no. 1 does not hold any rights over their alleged trademark in USA as they surreptitiously filed the application for

registration under the pretext of WIPO Convention treaties who formed shell company ""Ocean Telecom"" with the intent to monopolize in the matter of

the trademark ""iPhone"".

g) It is alleged that the convention application ""iPhone"" (Appn. No. 77975076) filed by respondent no. 1 before USPTO was suspended owing to pre-

existing rights of Cisco Systems LLC who had also filed a trademark infringement lawsuit against the respondent No. 1. and the respondent no. 1

chose to settle the lawsuit and entered into an undisclosed agreement with CISCO on 21.02.2007. The respondent No. 1 could register the trademark

iPhone"" in USA only on 18.08.2009 after submitting the consent agreement from CISCO before the USPTO. Therefore, the respondent no. 1 is not

the proprietor of the trademark ""iPhone"" and the application of trademark ""iPhone"" was filed in bad faith and contrary to the provisions of Section

18(1) of the trademark.

h) The impugned trademark for ""iPhone' in application no. 1144193 was filed based on convention priority under application no. 20023555 applied on

19/04/2002 at Switzerland. The application was filed without having any proprietary rights as they were very well aware of the earlier proprietary

rights of identical mark ""IPHONE"" by CISCO in respect of similar goods. The documents which reflects the existing proprietorship of Infogear

Technologies and CISCO were available in the EJSPTO and in India since the year 1996. Hence, the respondent no. 1 could not possibly claim that

they have no knowledge about the proprietary rights of CISCO in the Trademark iPhone.

i) It is averred that the respondent No. 1 neither denied the contention as they were aware of the proprietary rights of ""CISCO"" nor explicitly refuted

that they approach of CISCO for transfer of rights in iPhone but remained dormant in their counter statement. However, the respondent no. 1 made

the statement, in nutshell, it is alleged that the respondent is not the proprietor of the mark IPHONE and that Cisco is the proprietor thereof and that

the respondent formed a shell company to circumvent Ciscos registration for the mark IPHONE, it is for Cisco to have raised objections to the

registration of the mark IPHONE in India and internationally. Therefore, the opposition filed by the respondent no. 1 cannot be allowed since the mark

of the petitioner is opposed by the respondent no. 1, the petitioner is become person aggrieved.

j) It is stated that it was expressly admitted in the counter statement by the respondent no. 1 in the opposition proceedings that the Ocean Telecom is

their shell company to the effect that it is very common for companies in order to keep launches of new products or services confidential, use shell

companies for trademark filings. There is absolutely nothing illegal or unethical in filing for registration of a mark in the name of shell company and

upon the launch of the product, to assign the mark to a related or parent company

k) It is not denied by the respondent no. 1 that company ""Ocean Telecom"" was formed on 22/09/2006, whereas the applications for registration of

trademark ""iPhone"" filed in various countries including India much prior to the company formation.

The respondent no. 1 cannot claim protection under section 32 of the Trademarks Act, 1999 for the trademark ""iPhone

The present rectification was filed on various grounds. The relevant details of the same are mentioned below:-

i) The respondent no. 1 was well aware of the prior proprietary rights of the trademark ""IPHONE"" by CISCO when they filed the application in India.

No amount of use or extent of sales has any relevance since the very adoption of the trademark ""iPhone"" is tainted with bad faith and fraudulent in

nature. Thus, the impugned registration obtained by fraud would not acquire immunity or benefit under section 32 of the Trademarks act 1999. (Please

refer Page Nos. 527 and 528 of Law of Trademarks & Law Practice and Procedure II Edition Reprint 2007)

ii) The petitioner is aggrieved by the respondents' fraudulent application as well as deceptive claims and use of opposition procedures under No. MAS

- 736818 to cause much mental and financial harm, agony and delay the registration rights over petitioner's Trademark property. Unlike the

respondent, the petitioner bonafidely adopted their trademark ""IFON"" and invested huge money for branding their trademark ""IFON"" in India. Such

efforts stalled and the turnover of petitioners' business crippled due to the opposition filed by the respondent, and they launched their product under the

trademark ""iFon"" much earlier than the respondent. The said plea of the petitioner has not been denied by the respondent no. 1 during the course of

hearing about aggrieved party.

iii) The petitioner submits that the agreement between CISCO and respondent no. 1 in the year 2008 does not wipe out the stains of fraudulent

application in the year 2002. The very application of impugned registration is filed in bad faith and fraudulent in nature and the same cannot be

subsequently altered either by a later assignment or any other act. Even if the bad faith that existed at the time of application could be subsequently

removed, this will not prevent cancellation of the trade mark. In fact, there is no provision to remedy a bad faith application. It is obvious that the

Respondent no. 1 was allowed to gain proprietary rights in the trademark ""IPHONE"" only in the year 2008. thus the application under no. 3144193 in

the year 2002 is fraudulent in nature and they are not the true proprietor within the definition of Section 18(1) of the Trademarks Act 1999.

The adoption of trademark by the respondent no. 1 is in bad faith and is not the true proprietor within the meaning of Section 18(1) of Trademarks

Act 1999.

As per section 18 (1) of the Trade Marks Act, 1999, '""any person claiming to be the proprietor of a trademark used or proposed to be used by him

may apply in writing in prescribed manner for registration. The application must contain the name of the mark, goods and services, class in which

goods and services fall, name and address of the applicant, period of use of the mark"".

Counsel for the petitioner has placed the reliance of following decision:-

i) The Supreme Court in American Home Products v. Mac Laboratories Pvt. Ltd. (1986) 1 SCC 465 at p. 481 : 1986 (6) PTC 71 (SC), held that ""It is

pertinent to note that both under Section 14(1) of the 1940 Act and S. 18(1) of the 1958 Act (section 18(1) of the Trademarks Act 1999), An applicant

for registration must be a person claiming to be the proprietor of a trade mark used or proposed to be used by him. Therefore, unless it is the case of

an applicant for registration that he is the proprietor of a trade mark which has been used by him or which it proposed to be used by him he is not

entitled to registration.

ii) In Vitamain Ltd's Appi, (1956) RPC 1, it is held that,

The person who makes the application must assert a claim to be the proprietor of the trademark and should be able to substantiate the claim if

challenged"".

From the above well-settled principles of law it can be inferred that the person who claims to the proprietor of the trademark shall file application for

registration in good faith. Otherwise, any rights associated with such trademark is vitiated and be liable to be removed as the same lacks bonafide and

filed out of bad faith.

Counsel has also referred the page-92 of Kerly, Law of Trademarks, 9th Edition where the author states as,

In respect of a mark, which is not used and is only proposed to be used, it is not easy to show how anyone can be or claim to be the proprietor of a

trademark which no one yet used. Presumably, all that is needed in such case is that the applicant should claim in good faith to be entitled to be

registered as the proprietor of the mark

It is the case of the petitioner that the proprietary rights of the trademark ""iPhone"" vested with Infogear Technologies and CISCO, before it was

adopted by the petitioner. The said party has not filed the opposition to the petitioner trade mark. Even the respondent has not expressly denied the

knowledge of proprietary rights of Infogear Technologies and CISCO who is only rely upon their statement that the respondent no. 1 and CISCO have

arrived at a settlement in the year 2008 with respect to the mark ""iPhone"" and CISCO had no objection to the use and registration of the mark

iPhone"" by the respondent from the year 2008.

The petitioner has also referred the following decisions in support of its argument on the issue of proprietorship and it is alleged that the respondent

no. 1 is not proprietor within the meaning of Section 18 of the Act.

a) In Apple v. Circus, before the Appeal Court of Paris, September 12, 2012, Section 1, 2nd Chamber, the Court held that-

the acquisition of a trade mark during the course of court proceedings, for the sole purpose of defeating an infringement action, characterizes a

fraudulent riposte

If acquisition occurs before or during an infringement action is launched, indications of malicious intent may be inferred from the date on which the

sale occurred, as well as from the use (or the absence of use) of the mark assigned.

b) In First Instance Court of Paris, March 2, 2006, PID de 2006, No. 832, III, p. 438

The Court considered that the strategy consisting in purchasing an older trade mark as a way of getting around the obstacle posed by another earlier

trade mark, but more recent, was also held to be fraudulent The Court held that this acquisition was fraudulent, because it was not done for the

purpose of consolidating commercial operations, but rather in an attempt to overcome the obstacle posed by the second earlier trade mark, the

existence of which could not be ignored since its owner had refused a coexistence agreement.

c) In Marion Merrell Dow Inc. v. Unichem Laboratories Ltd. Misc. Pet. 2 of 1992, Bom. H.Ct., referred to by Del. H.Ct. in Winthrop Products v.

Eupharma Lab Ltd., 1998 PTC (18) 213, p. 219,

A person who blatantly copies somebody else's mark can have no right in that mark and cannot be the proprietor thereof. Therefore, once it is shown

that the person has no proprietary rights, then even though the word is an invented word, the Petitioner cannot apply for registration under section

18(1).

d) In a reported case before French Supreme Court, Commercial Division, June 1, 1999, PIBD 2000, No. 691, 111, p. 61,

The victim of fraudulently-obtained trade mark rights may still bring an action for invalidity based on the general principle of law frauscorrumpit omnia

(fraud corrupts everything). This may be initiated by any third party. It is not necessary to prove the existence of trade mark ownership rights. Third

parties who have a legitimate interest may challenge the fraudulently-obtained trade mark lights, specifically, to take an example, those obtained with

the sole purpose of preventing the use of some term or expression, while this use is legitimate, without this being necessitated by an intention to use the

sign in its initial function, that of distinguishing the goods and services of an enterprise from those of others. Thus, in the HALLOWEEN trade mark,

the cancellation action was brought by an Employer's Federation of confectionery businesses on behalf of one of its members, as existence of the

trade mark was standing in the way of its use by all confectionery businesses.

Therefore, it is submitted on behalf of the petitioner that the petitioners are entitled for the relief claim in the petition. Consequently the trademark

iPhone"" in application no. 1144193 in class 9 is liable to be expunged from the Trademarks Registry as the adoption of the trademark is not bonafide

and is in contravention to the principles laid down u/s. 18(1) of the Trademarks Act, 1999. The petitioner has also filed large number photocopies of

documents in support of the grounds mentioned in the petition.

In support of the registration for the trade mark iPhone under no. 1144193 in class 9, Apple Inc. case is as under:-

a) Apple was incorporated in the State of California, U.S.A. on 3 January 1977. On January 9, 2007, the Apple changed its name from Apple

Computer, Inc. to Apple Inc. Since its incorporation date, Apple has grown substantially. Apple has been described as the largest publicly traded

company in the world by market capitalization, and the most valuable United States company of all time. Apple has also been described as one of the

most valuable companies in the world, including in India. In February 2016, the Company had a market value of U.S. $529 billion.

b) Apple's products and services include, for example, the iPhone, iPad, Apple Watch, and Apple TV devices, a portfolio of consumer and

professional software applications, the iOS, OS X, tv OS, and watch OS operating systems, the iCIoud platform, the Apple Music platform, the Apple

Car play software, Apple Pay services, and a variety of other accessor/, services and support offerings. Apple also promotes, sells, and delivers digital

content and applications through its Apple Music, iTunes Store, App Store, Mac App Store, Apple TV App Store and iBooks Store services.

c) Apple sells its products worldwide through its retail stores, online stores, and direct sales force, as well as through third-party cellular network

carriers, wholesalers, retailers, and value-added resellers. In addition, Apple sells a variety of third-party Apple compatible products, including

application software and various accessories through its online and retail stores. Apple sells to consumers, small and mid-sized businesses and

education, enterprise and government customers.

d) Over the course of its almost 40 years of operation, Apple has earned a fiercely loyal customer base and Apple's APPLE branded Goods and

Services have become some of the most recognized and highly sought after in the world. Apple's long standing commitment to bringing the best user

experience to its consumers through its innovative products and services has earned it a reputation as a pioneer without peer in the field of technology.

e) In 2011, MBO ranked Apple at # 1 as the most valued brand in the world, with an estimated value of about US $ 153.2 billion. The following chart

summarizes Apple's placement in MBO's annual rankings since 2006:

f) Interbrand is a brand valuation and management consultancy with over 30 offices in 20 countries and over thirty years of experience in brand

management and assessment. Interbrand publishes its ""Best Global Brands"" publication - an annual assessment of the 100 most valuable brands in the

world. Apple has been present on Interbrand's annual brand rankings since at least 1999. Interbrand has consistently recognized the APPLE brand as

belonging in the top 35 of the world's most valuable brands. In 2013, Apple was ranked as the most valuable brand in the world, with an estimated

brand value of over US $ 98.3 billion. The following table illustrates Apple's Interbrand rankings since 2009:

g) Apple is the prior adopter, user and registered proprietor of the trademark iPhone.

h) The first application for registration of the trademark iPhone in India was filed in 2002 under no. 1144193 dated 17th October, 2002 in class 9,

covering goods, namely, ""computer hardware and software"".

i) In addition to the first registration in 2002, Apple also holds a September 2006 application in India under no. 1491583 in class 9 dated 27th

September, 2006. The application was originally filed in the name of Ocean Telecom Services LLC. The Applicant, Ocean Telecom Services LLC

merged into Apple Inc. on 4th October, 2007. This merger has been recorded at the Trademarks office and the proprietor name has been updated to

Apple Inc.

This 2006 application is also prior in time to iVoice's May 2007 application.

j) Apple announced iPhone on January 9, 2007 and went on sale in US first on June 29, 2007.

k) As the timeline demonstrates, Steve Job's public announcement of IPHONE, reported in every media outlet around the world, occurred in January

2007, four months prior to iVoice's application (9th May, 2007). Such news could not have escaped the attention of iVoice who alleges to be in a

similar trade.

l) It is submitted that even the announcement of the iPhone did not come as a surprise. For many years prior to that announcement, the press and the

public speculated about the possibility that Apple would be launching a mobile device that combined the functionality of an iPod media player with a

cell phone and other features under the trademark iPhone.

It is alleged by the respondent no. 1 that apart of these specific activities undertaken by Apple Inc. to secure rights in the trade mark iPhone in

India and internationally and third party publicity that Apple Inc. received even prior to the launch of iPhone in 2007:

i) Apple had acquired the domain name www.iDhone.ora in December 1999.

ii) The New York Times in August 2002 published in the article entitled ""Apple's chief in the Risky land of handheld"" and stated that Apple will launch

iPhone.

iii) Apple's chief in an interview published in the International Herald Tribune on 11th September 2002 was asked if there would be an iPhone.

iv) Apple also stated worldwide fillings for the mark iPhone in 2002.

v) In March 2005-Business 2.0 magazine published an article on what would be next for Apple, and iPhone was listed as one of the top five potential

products.

vi) A Wikipedia entry defining iPhone as forthcoming produce of Apple appeared as early as 2005.

vii) ""And that, I think, is one of my favorite things about Apple's latest announcements. Anything seems possible. Apple branded iPhone? Video iPod?

Stay tuned."" (Macworld, November 1, 2005).

viii) ""Of course, rumors of an 'iPhone' (an Apple-branded cell phone that would revolutionize the way we use mobile device) have been swirling

around for years now.""(PC Magazine, November 29, 2006).

ix) ""The Apple iPhone is a little like the legends of yore. There is no actual evidence of such a beast but because these are iPods and cell phones it

seems like a sure thing that Apple will produce a cell phone."" (Apple Matters, May, 18, 2006).

It is stated by the respondent no. 1 that these publications were clearly not presenting IPHONE as a descriptive or generic term for a class of

telephones or telecom service, but as a brand name that was widely expected to be used on a product from Apple.

In order to rebut the submissions and the allegation that the mark iPhone is devoid of distinctive character under section 9 of the Trademarks Act,

Apple's response is as follows:

(i) The mark iPhone is a coined and fanciful term, not having a dictionary meaning, therefore, inherently distinctive and not violative of the provisions

of Section 9 of the Act.

(ii) Registration granted in India and other foreign jurisdictions is evidence of recognition of the distinctiveness of the mark iPhone Apple, as an

illustration has submitted copies of registrations obtained in Australia, Chile, China, Colombia, European Union, Norway, Russia, Singapore, South

Africa, Switzerland and Taiwan that date back to 2002.

(iii) Since those initial applications in 2002, Apple has continued to actively pursue international trademark protection for its IPHONE mark in India and

around the world. Currently, Apple has obtained registration for its iPhone trademark in every major market around the world, totaling over 125

jurisdictions around the world.

(iv) Section 32 of the Trademarks Act incorporates protection of registration on ground of distinctiveness in certain cases. The section states that,

where a trademark is registered in breach of sub-section (1) of section 9, it shall not be declared invalid if, in consequence of the use which has been

made of it, it has after registration and before commencement of any legal proceedings challenging the validity of such registration, acquired a

distinctive character in relation to the goods or services for which it is registered.

(v) Notwithstanding the fact that Apple's trademark iPhone was distinctive at the time of filing the application for registration in India, it is also

significant to note that the trademark iPhone has acquired a distinctive character at the time of filing of the rectification in December 2012 and is

exclusively associated with Apple. The Respondent submits that the trademark IPHONE has acquired distinctiveness with respect to the Apple goods

and services that have been offered under the mark. In fact, the IPHONE mark has become one of the most well-known trademarks in India and

throughout the world.

(vi) The term IPHONE has become distinctive by virtue of (1) the fame of Apple's family of 1-prefix marks for example iPad, iPod, iTunes, iMac,

etc., (2) the enormous publicity surrounding Apple's anticipated and actual use of the mark IPHONE for Apple's digital mobile device, and for the

software applications and telecommunications, retail, and support services offered in connection with the device including the publicity given by third

parties, (3) Apple's extensive advertising and marketing of these goods and services under the IPHONE mark, (4) and the sales success they have

achieved. As a result, the public unquestionably recognizes IPHONE as an indicator of source.

(vii) Publicity and extensive sales of the mark iPhone:

From 2007 to date, Apple has launched the following IPHONE models: iPhone 1st generation (2007), iPhone 3G (2008) available in India August

2008, iPhone 3GS (2009) available in India March 2010, iPhone 4 (2010) available in India May 2011, iPhone 4s (2011) available in India November

2011, iPhone 5 (2012) available in India November 2012, iPhone 5c and iPhone 5s (2013) available in India November 2013, iPhone 6 and iPhone 6

Plus (2014) available in India October 2014. Apple unveiled the iPhone 7 and iPhone 7 Plus smartphones in San Francisco on 7th September, 2016

which was made available in India from October, 2016. In September, 2017, the Applicant launched iPhone 8 and iPhone X- a pecial edition phone

launched on the 10th anniversary of iPhone, iPhone 8 went on sale on 22nd September, whereas iPhone X was made available for pre-order on 27th

October, 2017 and as released on 3rd November, 2017.

As illustrative list of press releases by Apple and other news articles that illustrate the success of each new model of the iPhone detailed as

follows:

i. Original iPhone: 1 million devices sold just 74 days after release.

ii. iPhone 3G: 1 million devices sold in the first three days.

iii. iPhone 3GS: 1 million devices sold in the first 3 days.

iv. iPhone 4: preorders topped V2 million in the first 24 hours; 1.7 million devices sold in the first 3 days.

v. iPhone 4s: preorders topped 1 million in the first 24 hours; and 4 million units sold in first three days.

vi. iPhone 5: preorders topped 2 million in first 24 hours; 5 million units sold in the first 3 days.

vii. iPhone 5s and iPhone 5c: nine million iPhone 5s and iPhone 5c devices sold in just three days from launch.

viii. iPhone 6 and iPhone 6 Plus: over 10 million new iPhone 6 and iPhone 6 Plus models sold just three days after the launch on 19 September 2014.

ix. iPhone 7 and iPhone 7 Plus: On September 9, 2016, when the iPhone 7 went on preorder, just hours after going on sale, supplies had run out and

shipment dates were pushed back. Just three hours later, the jet black iPhone 7's shipment date was pushed back to November. Such is the demand

for the latest iPhone model announced by Apple.

In order to rebut the arrangement of the petitioner, it is alleged that Cisco is the proprietor of the trademark iPhone and that the Respondent was

sued for trademark infringement by Cisco which suit was settled by an undisclosed agreement, Apple's response is as follows:

(i) iVoice is simply trying to distract from the true issues at hand, which is that Apple's rights to IPHONE in India predate iVoice's infringing

application for iphone which it filed in India in May 2007.

(ii) Cisco does not currently have, and never has had a trademark registration for IPHONE in India. In addition, Cisco has never challenged the use

and/or any of Apple's IPHONE applications, registrations or use in India in an opposition or a rectification or a law suit.

(iii) Apple strongly emphasizes that the issue of Cisco's prior U.S. trademark registration is irrelevant to the matter at hand in India. Whether Cisco

had a US trademark registration for IPHONE from 1996 is irrelevant to whether Apple was the proper proprietor of the IPHONE mark in India.

(iv) It is iVoice's contention that Apple is not the proprietor of the mark iPhone and that Cisco is the proprietor thereof and that Apple formed a shell

company to circumvent Cisco's registration for the mark iPhone- it is for Cisco to have raised objections to the registration of the mark iPhone in India

and internationally.

(v) Cisco and Apple had settled the trademark dispute in the United States by an undisclosed agreement dated February 21, 2007.

(vi) Cisco formally executed a consent Agreement dated November 25, 2008 in favour of Apple Inc. consenting to the use and registration of the

mark iPhone in favour of Apple Inc. In the consent Agreement itself, the parties, Cisco and Apple have agreed that their respective use of the mark

iPhone for their respective goods and services is not likely to cause confusion, mistake or deception. Among other things, (a) the parties have used

their respective iPhone marks in the United States and neither party is aware of any material incident of actual confusion among consumers and (b)

the Cisco goods are sufficiently different from Apple goods' services to avoid consumer confusion.

(vii) Cisco and Apple have arrived at a settlement with respect to the mark iPhone and that U.S. dispute. Cisco has no objection to the use and

registration of the mark iPhone by Apple in India and it never has. iVoice has absolutely no locus standi to raise Cisco's U.S. registration as a bar to

the registration of the mark iPhone by Apple in India.

(viii) It is significant to note that the peaceful coexistence of Cisco and Apple's rights is clearly evident from the fact that as recently as on 31st

August, 2015, Cisco and Apple have entered into a business development relationship regarding making iPhone and iPad a business tool. This business

partnership is evidence of the fact that there is no legal dispute pending between Apple and Cisco regarding the mark iPhone. In fact, Cisco is

collaborating with Apple to integrate iPhone with Cisco's enterprise environment and provide unique collaboration on iPhone and iPad. An article

evidencing this business collaboration has been filed.

To the allegation that Apple formed a shell company, Ocean Telecom Services LLC and filed for registration of the mark iPhone in order to

circumvent Cisco's registration of the mark iPhone, Apple's response is as follows:.

(i) As regards the formation of a shell company by Apple, it is very common that companies in order to keep launches of new products or services

confidential, use shell companies for trademark filings.

(ii) There is absolutely nothing illegal or unethical in filing for registration of a mark in the name of a shell company and upon the launch of the product,

to assign the mark to the true proprietor.

(iii) There is no specific bar under the Trade Marks Act, 1999 on filing of trademarks through subsidiary companies and therefore the argument of the

Petitioner is completely misconceived. The provisions of Section 18 of the Trade Marks Act, 1999 specifically state that ""any person claiming to be the

proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed

manner for the registration of his trade mark"". The Trade Marks Act, 1999 further does not lay down any limitation on the assignment of a registered

or an unregistered trademark. Accordingly, there is absolutely nothing illegal or contrary to law in a trademark filing which is made in the name of a

subsidiary company and subsequently assigned to the operating company.

(iv) Just as an assignment from Info Gear to Cisco of the mark iPhone is valid, on account of acquisition of InfoGear by Cisco, the assignment from

Ocean Telecom to Apple Inc. is also valid on account of the merger of Ocean Telecom into Apple Inc.

It is submitted that many companies in the U.S. file an application first in not their home country. Some of such examples include famous and

reputed U.S, companies such as Google (priority filing done in Tonga), Facebook (priority filing done in Tonga), Twitter, Inc. (priority filing done in

Jamaica), Mattel, Inc. (priority filing done in Saint Lucia), Zynga Inc (priority filing done in Trinidad and Tobago), Cisco (priority filing done in

Jamaica), Intel Corporation (priority filing done in Costa Rica). These companies have then extended the priority claim to different countries, including

India.

Companies, in order to keep their filings confidential, file in IPO's that do not have online presence/do not disclose details of marks filed online. This is

an ""anti-piracy measure"" since in the internet world, leakages and misuse are very common.

In rebuttal that Apple did not First prefer an application for registration of the mark iPhone in U.S.A- their home country; but filed applications in

different countries and claimed priority from these applications, Apple's response is as follows:

(i) It is submitted that the Trademarks law or the Paris Convention does not impose any obligation on an entity to first file in their home country and

then seek priority from the home country application for filing applications in other countries;

(ii) iVoice appears to be under misconception of law as well as facts and is raising submissions which are contrary to law and liable to be dismissed by

the Hon'ble board at the very outset.

It is stated that Apple is the true, bonafide and legal proprietor of the trademark iPhone and has legally and by observing due process of law,

obtained registrations for the trademark iPhone internationally. It is submitted that the launch of the iPhone product by Apple was one of the most

awaited product launch internationally and Apple, to keep the interest and mystery behind their product, made best efforts to keep their product name

iPhone as confidential.

After the launch, the mark iPhone has gained such popularity and success that the same is exclusively associated with Apple. In fact such is the

popularity and success of the trademark iPhone that the mark has acquired a well-known status and Apple herewith specifically submits that the

Hon'ble Board must evaluate the submissions of the Respondent and the documentary evidence submitted herewith and declare the trademark iPhone

of Apple as a well-known trademark.

It is stated that iVoice's intention is only to trade upon the reputation and goodwill that subsists in the well- known trademark iPhone of Apple by

adopting a phonetically and conceptually identical mark IFON for the exact description of goods.

(i) in 2002 Apple had already filed for the mark iPhone in India and internationally; (ii) in 2006, Apple through a subsidiary Ocean Telecom, filed an

application for IPHONE/iPhone; (iii) from at least as early as 2002 until launch, prominent news media such as the NY Times were already reporting

that Apple would be releasing a new mobile phone under the name IPHONE; (iv) in January of 2007, Apple publically announced iPhone in a high

profile media event, this was four months prior to iVoice's application date.

It is submitted by the respondent no. that the petitioner/iVoice has absolutely no basis of adoption of the mark 'iFon'. It further submitted that the

intention of the Trademarks Act is to recognize the proprietorship of an entity in its trademark, provide for better protection of trademark and to

prevent third parties from fraudulent misuse of such a trademark.

iVoice in the instant matter is trying to unjustly enrich itself by using a phonetically and conceptually identical mark as that of Apple for identical goods

and to benefit from the reputation and goodwill that Apple enjoys worldwide, including in India.

iVoice's claims of fraud are misconceived, irrelevant, baseless and contrary to law and facts. It is clear that since Apple has filed an opposition

against the trademark application of the Petitioner for registration of the mark 'iFon' in class 9, the Petitioner is trying to attack the registration of

Apple by making absurd and unsustainable claims.

It is submitted that the large number of documents submitted by the Petitioner in support of the rectification is irrelevant only related to news

articles or press releases or journals related to the dispute between Apple and Cisco. None of these documents have any bearing on the instant

rectification petition as Cisco is not even a party in the Rectification petition against Apple and the dispute between the Respondent and Cisco has

already been settled in which both parties have recognized their distinct sphere of activity under the mark iPhone.

The main case of the petitioner is that it has adopted the mark 'iFon' in May 2007 in relation to mobile phones. iVoice Ventures Private Limited

had filed an application for registration of the mark 'iFon' under No. 1556676 in class 9 dated 9th May, 2007. The respondent no. 1 is not the proprietor

of the mark iPhone on account of following reasons.

25.1 The trademark iPhone was originally conceived and adopted by InfoGear Technology Corporation in 1996 in respect of telephone and dialup

internet portal products and obtained registration for the mark iPhone before the USPTO.

25.2 InfoGear Had also filed for registration of the mark iPhone in India under no. 906648 which was subsequently withdrawn in 2005.

25.3 In 2000, Cisco acquired rights in the trademark iPhone from InfoGear.

25.4 That Apple formed a shell company, Ocean Telecom Services LLC and in 2006 filed for registration of the mark iPhone in order to circumvent

Cisco's registration of the mark iPhone.

25.5 That Apple from 2006 started to file trademark applications for the mark iPhone in the name of Ocean Telecom Services LLC in different

jurisdictions such as Trinidad and Tobago, New Zealand, etc. Also filed an application in India under no. 1491583 for the mark iPhone in classes 9 and

28 dated 27th September, 2006.

25.6 Apple announced the launch of iPhone on 9th January, 2007.

25.7 On 10th January, 2007, Cisco filed a lawsuit against Apple for trademark infringement. Apple and Cisco settled the suit and entered into an

undisclosed agreement on 21st February, 2007. Apple obtained registration for the mark iPhone on 18th August, 2009 in US by submitting a consent

agreement from Cisco.

25.8 The conduct of the respondent no. 1 is fraudulent and is dishonest in adoption of the mark iPhone because:

(i) Cisco is the prior owner of the trademark iPhone.

(ii) That Apple in involved in deception by filing applications in the name of the shell company, ""Ocean Telecom Services LLC"".

(iii) Apple's application in India for the mark iPhone in class 9 under no. 1144193 dated 17th October, 2002 is based on a convention priority from an

application filed by Apple in Switzerland, and not from their home country, USA.

(iv) Apple had no proprietary rights in the mark iPhone when that application for registration was filed in India.

It is admitted position that the petitioner Ventures Private Limited had filed an application mark 'iFon' under no. 1556676 in class 9 dated 9th May,

2007 as a ""proposed to be used"" in relation to goods covered by the mark in class 9: all types of mobile phones/cellular phones.

During the course of hearing, it is not denied by the learned counsel for the petitioner that the petitioner is not using the trade mark in question for

the last many years. It was used for few months initially and the total sale of Rs. 28 lakhs was made, therefore, the petitioner has stopped using the

same mainly on the reason for awaiting the final outcome of the litigation.

It is also not denied that the petitioner was the first person to adopt and use the mark iPhone in India and abroad. As per the admitted case of the

petitioner that the said trademark was already being used in various countries of the world. It is the case of the petitioner, it was not being used by the

respondent no. 1 but by third party. Thus, it is clear that the trade mark was not coined or adopted by the petitioner in India. On the date of filing of

application for registration, the petitioner was aware that the trade mark iphone was already belonging to some other parties.

The entire tone of the argument of the petitioner is that the respondent no. 1 is not the proprietor of trademark in question and it was wrongly

acquired. The petitioner has infact challenged the validity of title document on many counts.

It is also admitted that the date of application for registration of respondent no. 1 is years prior to the date of application of the petitioner.

Burden of Proof

In an application for rectification, the burden of proof is on the applicant for rectification. The burden to show is that when the name was registered, it

had not acquired distinctiveness or that at the time of commencement of the proceedings it had ceased to be distinctive of the goods of the registered

proprietor. Mere production of evidence by the applicant for rectification that his goods had acquired and continued to enjoy distinctiveness in various

parts of the country was not enough.

Even this Tribunal has the discretion to be exercised under Section 57 of the Trade Mark Act to cancel or vary registration if a ground for

rectification or removal has been made out, still the Court may not exercise its discretion as public interest is a highly important consideration. Section

57 is the mandatory provision the petition for removal of trade mark cannot be refused despite the finding that the registered proprietor had not

satisfactorily established the use of the mark.

In the present case, admittedly the petitioner is not the first adopter and user of the trade mark iPhone. On the date of application for registration

of the trade mark iPhone by the applicant, the applicant was aware that the trade mark of the phone was belonging to third party or the respondent no.

1.

It is also admitted position that on the date of application of the applicant is subsequent to the date of application of the third party and/or of the

respondent no. 1. It is also not denied by the applicant that the applicant has used the trade mark iPhone only for few months at the initial period and

later on the said trade mark has not been used for the last many years.

It is also the admitted position that the trade mark iPhone of the respondent no. 1 has not been challenged by the third party referred by the

petitioner being the proprietor of the same. The case of the respondent no. 1 is that they have acquired the right by virtue of settlement.

The petitioner has not challenged the said settlement between the respondent no. 1 and 3rd party in any court of law. Roving inquiring is not

permissible in law about the title and interest of the two parties.

When the trade mark of the respondent no. 1 was advertised in the Trade Mark Journal which was not challenged either by the Cisco or any third

party by way of notice of opposition. Even after the registration of the said trade mark, the third party has not questioned the trade mark of the

respondent no. 1. Settlement is also not challenged by the Cisco or any third party. The trade mark of respondent no. 1 was inhabited distinctive trade

mark. Distinctiveness of the mark even cannot be challenged by the petitioner as the applicant himself has filed the application without any user which

is opposed by the respondent no. 1. The discretion for removal of the trade mark cannot be exercised in favour of party which is not the proprietor of

the trade mark.

Even otherwise, if we may examine the document which would show that there is hardly any user of few months by the applicant and for the last

many years, the mark iPhone has not been used by the applicant. There is no valid explanation given by the applicant at the time of hearing of the

present petition. On the other hand, the user of the mark by the respondent no. 1 is so extensive which cannot be denied by the applicant.

From the entire facts and circumstances of the matter, I am of the view that in this manner no party cannot be allowed to grab the trade mark of

another party by virtue of challenging the title. Even the petitioner has not challenged the documents which are executed between respondent no. 1

and third party in the application for rectification. The filing of its application for registration of a trade mark itself was bad as on the date of

application, the petitioner was aware that the said trademark was not belonging to the petitioner. No discretion cannot be exercised in favour of a

party who himself is not the proprietor of Trade Mark.

Under these circumstances, I am of the considered view that the rectification application is totally false and frivolous and the same is liable to be

dismissed. No cost. Copy of the Order be sent to respondent no. 2 for information.