Apple faces competition for iWatch trademark in Europe

Several E.U. companies have staked claims on the iWatch brand ahead of Apple

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.

A concept design of the Apple iWatch. (Image credit: FuseChicken.com)
A concept design of the Apple iWatch. (Image credit: FuseChicken.com)

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.

Probendi is not the only company in Europe staking a claim on the iWatch name, though. AIO Distribution, a company from the U.K., also filed for a European registration of the trademark in Dec. 2012. In this case, AIO tried to register "iwatch", with a lower case w, in class 9 and also class 38, which covers mobile phones and communications by mobile phones.

AIO's trademark claim hasn't been registered yet though, and its application was opposed by the Vlaamse Media Maatschappij (Flemish Media Company, VMM), according to OHIM's records.

VMM has an online portal, iwatch.be, where content from the Flemish television channel VTM can be watched for a fee. The company has registered the "iWatch" trademark in Belgium, the Netherlands and Luxembourg, according to the records of the Benelux Office for Intellectual Property (BOIP), which covers the three countries.

A VMM spokeswoman reached on Friday declined to comment on Apple's trademark filings in other countries and wouldn't discuss the opposition of AIO's filing at the OHIM. The company doesn't discuss its strategies, she said.

AIO Distribution could not be reached for comment.

There is another iWatch trademark holder on record at the BOIP too. A private person from the Netherlands, Otto F. Weise, registered "iWatch", "iWatch Phone" and "iWatch Connect" in different categories according to BOIP records.

The trademark iWatch is registered in a category covering jewelry while iWatch Phone and iWatch Connect are registered in a category that among others covers cash registers, calculating machines and data processing equipment.

The situation is much the same in the U.K., where Probendi owns the trademark (because it has an E.U. trademark), records at the Intellectual Property Office (IPO) show. In the U.K., an application for "i_watch" from Turkey in the jewelry category is also pending.

In Germany, a visual iwatch trademark is registered by Matrix Security, records of the German Patent and Trademark Office (GPTO) showed. And in June, a Vanessa Hansen, applied for the German word mark "iWatch".

Apple did not respond to a request for comment.

Loek is Amsterdam Correspondent and covers online privacy, intellectual property, open-source and online payment issues for the IDG News Service. Follow him on Twitter at @loekessers or email tips and comments to loek_essers@idg.com

Join the newsletter!

Or

Sign up to gain exclusive access to email subscriptions, event invitations, competitions, giveaways, and much more.

Membership is free, and your security and privacy remain protected. View our privacy policy before signing up.

Error: Please check your email address.

Tags Applelegalconsumer electronicsintellectual propertyaccessoriesVlaamse Media MaatschappijProbendiAIO Distribution

Keep up with the latest tech news, reviews and previews by subscribing to the Good Gear Guide newsletter.

Loek Essers

IDG News Service
Show Comments

Brand Post

Most Popular Reviews

Latest Articles

Resources

PCW Evaluation Team

Luke Hill

MSI GT75 TITAN

I need power and lots of it. As a Front End Web developer anything less just won’t cut it which is why the MSI GT75 is an outstanding laptop for me. It’s a sleek and futuristic looking, high quality, beast that has a touch of sci-fi flare about it.

Emily Tyson

MSI GE63 Raider

If you’re looking to invest in your next work horse laptop for work or home use, you can’t go wrong with the MSI GE63.

Laura Johnston

MSI GS65 Stealth Thin

If you can afford the price tag, it is well worth the money. It out performs any other laptop I have tried for gaming, and the transportable design and incredible display also make it ideal for work.

Andrew Teoh

Brother MFC-L9570CDW Multifunction Printer

Touch screen visibility and operation was great and easy to navigate. Each menu and sub-menu was in an understandable order and category

Louise Coady

Brother MFC-L9570CDW Multifunction Printer

The printer was convenient, produced clear and vibrant images and was very easy to use

Edwina Hargreaves

WD My Cloud Home

I would recommend this device for families and small businesses who want one safe place to store all their important digital content and a way to easily share it with friends, family, business partners, or customers.

Featured Content

Product Launch Showcase

Don’t have an account? Sign up here

Don't have an account? Sign up now

Forgot password?