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Apple Loses Dispute over 'Steve Jobs' Trademark: A Lesson in Trademark for Businesses

Apple Loses Dispute over ‘Steve Jobs’ Trademark: A Lesson in Trademark for Businesses

Apple has lost its founder’s name ‘Steve Jobs’ to an Italian fashion company. The fashion company’s name is ‘Steve Jobs’. Naples-based founders, Vincenzo and Giacomo Barbato, registered ‘Steve Jobs’ as their company’s trademark in 2012.

The Steve Jobs company did not stop there. The company trademarked a logo consisting of a ‘J’ with a bite taken out of it. The logo also has an iconic apple leaf sprouting from the top of the letter!

Apple took up the matter against the Steve Jobs company, arguing that Steve Job’s company logo was similar to its Apple logo. 

In 2014, the European Union Office for Harmonisation in the Internal Market (EU Office) decided the trademark dispute against Apple. The news is just now in the public because as reported in the news the fashion company has just successfully completed the registration of ‘Steve Jobs’ as its trademark around the world.

This is bad news for Apple—a huge bite taken off Apple brand.

But how did this happen to Apple under trademark law in this millennium?, you may wonder. 

Apple Losses Dispute over 'Steve Jobs' Trademark: A Lesson in Trademark for Businesses

I will point out two things that may have informed the EU Office’s decision:

First, Apple never registered ‘Steve Jobs’ as its trademark. As Apple’s Founder and brand driver before his death in 2011, one would have expected Apple to have registered ‘Steve Jobs’ as one of its trademarks—at least as a defensive IP strategy, not necessarily for serious enterprise. A list of Apple’s trademarks on its website does not include ‘Steve Jobs’. Though Apple warned on its website that “[t]he absence of a product or service name or logo from this list does not constitute a waiver of Apple’s trademark or other intellectual property rights concerning that name or logo”, it’s of no effect in this case. If a name or logo means anything to your business, grab it before somebody else does, effectively says the EU Office.

Second, the Steve Jobs company is a fashion company that makes bags, jeans, and T-shirts, with Steve Jobs’s quotes on a number of them. Apple does not run any fashion business. Though one expects the Steve Jobs company would steer clear of the electronics turf Apple plays big in, you can’t be too sure. Vincenzo and Giacomo Barbato already indicated that their fashion company has technology in the picture. They are in talks with a Chinese company to produce Steve Jobs phones. They say the phones won’t be cheap.

This must be torture to Apple whose lawyers would be digging deep for a lethal weapon against Steve Jobs company to ensure its Apple brand is neither diluted nor infringed in the long run. Considering late Steve Job’s brand value to the Apple brand, I think trademark dilution by Steve Jobs company’s adventures is one big problem Apple would need to address. 

Though I still consider the Apple-Steve Jobs trademark dispute a developing story, there are a few lessons for businesses out there. I list below 4 lessons your business can take away from it:

  1. Take trademark seriously. Your trademark is vital to your brand and consequently your business, whether big or small;
  2. Do a periodical IP audit. Investing in an IP audit of your business—especially if you are looking to growing big—is worth considering for your business;
  3. See the big picture. When you run a big (or potentially big) business, you can’t afford not to see the big picture regarding your IP, business, or business IP. When you are big-picture blind, it’s most likely you are not seeing what your real and potential competitors are already brainstorming, drinking, and eating night and day; and
  4. Have an IP strategy. Do this early on so you don’t miss any item in your portfolio that may be of commercial value to your business.
In IP matters, it’s never too early because IP matters to business and development. 

 

 

IP Matters, Week One, 2018
Follow hashtag on LinkedIn, #ipmatterswithsenator

15 Comments

15 thoughts on “Apple Loses Dispute over ‘Steve Jobs’ Trademark: A Lesson in Trademark for Businesses
  1. Nice read… with these simple and clear analysis, everyone can follow the lessons.

    1. Thank you very much, Stephen.

  2. Oh my. This is huge. It would be interesting to see how Apple’s legal team handle a Steve Jobs Phone.

    1. Yes, huge. It would really be interesting to see how Apple’s legal handles that. If Steve Jobs company goes into technology where Apple is a player and start making phones, trademark-infringement issues may arise to a level that the court may not be able to close its eyes against.

      But for this to be more likely, the court may need to go beyond trademark law to consider related business-brand matters such as passing off and unfair competition or at least look at the dispute from a trademark-dilution angle.

      Apart from the name ‘Steve Jobs’, the company’s logo is one aspect I believe may most likely give it away in a court of law.

      Thanks for dropping by, Elizabeth.

  3. Beautiful read! It’s concise, cogent, and comprehensive.

    1. Thank you very much, Gabriel!

      1. Thank you! This is very instructive. i anticipate the unfolding of events on various legal issues regarding the production of a ‘Steve Jobs phone’ not by Apple.

  4. Wow…. This might just open a new vista in IP law. Great job

    1. Yes, it just might. Let’s keep our fingers crossed. Thanks for dropping by, Agwu.

  5. This is rather interesting. I’m a bit worried though. I understand that there is lesser protection for unregistered trademarks but what’s the place of the Common Law Action of Passing Off in all of this? The names “Apple” and “Steve Jobs” are not the same but I still think this is a clear case of the Italian company trying to ride on the already established reputation on the Apple founder. What are your thoughts on this? Also, we’re any steps taken to challenge the EU office’s decision?

    1. Thank you, Elemena. You have raised a critical issue: passing off in common law. As you know, passing off applies to unregistered trademark. The difficulty in Apple’s case is that ‘Steve Jobs’ is not even Apple’s unregistered trademark at all, in the real sense. Though Steve Jobs was part of the product launch of most of Apple’s defining products, Apple never used the name ‘Steve Jobs’ in connection with any of their products at all. If Apple had done this but failed to register his name as trademark, then we can rightly apply the common law principle of passing off.

      But seeing that the Italian Steve Jobs company are obviously out to benefit commercially from the brand value in the name ‘Steve Jobs’, I think a court of law may justifiably consider applying the principle of unfair competition and even public policy to shoot down the Steve Jobs company. I think if the courts fail to do so, they would have unwittingly opened a toxic floodgate of celebrity-name, trademark-infringement related objections and lawsuits across the world.

      1. By the way, the Estates of Steve Jobs looks better positioned to go into the ring with the Steve Jobs company and have them boxed into a corner they would, at least, be too happy to negotiate with Apple.

      2. Agreed and duly noted. Interesting Discourse. Thanks!

  6. Very interesting read. How on earth did Apples miss out on protection of Steve Jobs….

    1. Yes, how on earth could Apple have missed that! Thanks for dropping by, Semme. We hope you visit again.

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