July 05, 2013, 1:31 PM — Apple will face competition in Europe for the "iWatch" trademark it has already filed for in Japan, Taiwan and Mexico, because other companies have already registered the name in relevant trademark categories.
Among them is Probendi, an Italian company that is also incorporated in the U.S, which in February 2009 registered the European trademark for iWatch with OHIM, the European Union agency responsible for registering trade marks and designs that are valid in all 28 countries of the E.U.
Probendi owns the word mark for "iWatch" and uses it for a mobile phone application that sends real-time audio, video and location data to an online emergency and security support system that can be used by emergency services, according to a brochure about the product. Daniele Di Salvo, Probendi's director, reached on Friday could not immediately comment on Apple's trademark filings.
That Probendi owns the word mark in the E.U. doesn't mean however that Apple cannot apply for a European "iWatch" trademark, said Margarita Garcia of OHIM's information center. "We are an administrative institution, we do not refuse applications," she said. "We cannot be a party in these battles."
According to an online description of OHIM's procedures, it is up to registrants to defend their trademarks, and for new applicants to demonstrate that already-registered trademarks are not being used.
The owner of a trademark has the obligation to ensure it is used and has to check if others in the same market are using the trademark, she said. When an application is filed for the same class of product, OHIM will send a letter to the trademark owner notifying that a similar trademark has been filed, after which the owner can file an opposition which will be reviewed by OHIM, she added.
In Probendi's case, the trademark is in class 9, which covers apparatus, instruments and media for recording, reproducing, carrying, storing, processing, manipulating, transmitting, broadcasting, retrieving and reproducing music, sounds, images, text, signals, software, information, data and code. It also covers software, instruments and apparatus for the location and navigation of vehicles and personnel; computer application software for mobile phones.
Whether an opposition succeeds depends on the arguments filed, Garcia said. "It is never, easy, it is never black and white," she said, adding that anyone can oppose a trademark application within three months after it is published.