Posted: March 8th, 2013
By: Lena Mualla *
Russian Railways (RZD) has sued Apple, alleging that Apple has committed trademark infringement. It is seeking 2 million rubles, which is about $66,000. The state-owned railway reported: “RZD intends to protect its intellectual property, especially since the trademark is well known in the Russian Federation.” Basically, the company alleges that by allowing a third-party app developer to use its logo, Apple has committed trademark infringement. The app allows users to calculate their cargo tariff when traveling. The app picture features the RZD logo with a picture of train tracks below it.
With these facts, some observers have predictably responded to the railway’s allegations with skepticism and derision. A recent suit in which the Swiss Federal Railway (SBB) successfully settled with Apple for $21 million, also over trademark infringement, may have served as inspiration. In September, SBB sued Apple, alleging that the clock design used in iOS 6 illegally made use of its own clock image, which appears in Swiss train stations. That clock image was originally designed by Swiss engineer Hans Hilfiker in 1944. Ultimately, Apple paid the lump sum, allowing it to continue using the image in its iPhones and iPads.
A company’s inclination to negotiate a settlement is directly tied to its likelihood of losing in court. So, what are the chances that Apple will settle this one? RZD must show it has a chance of prevailing on its trademark infringement claim. According to Cornell’s Legal Information Institute:
“To prevail on a claim of trademark infringement, a plaintiff must establish that it has a valid mark entitled to protection; and that the defendant used the same or a similar mark in commerce in connection with the sale or advertising of goods or services without the plaintiff’s consent. The plaintiff must also show that defendant’s use of the mark is likely to cause confusion as to the affiliation, connection or association of defendant with plaintiff, or as to the origin, sponsorship, or approval of defendant’s goods, services or commercial activities by plaintiff[…]. Thus, “use,” “in commerce,” and “likelihood of confusion” are three distinct elements necessary to establish a trademark infringment claim.”
There are a few key differences between the SBB case and this one. Most notably, this one concerns a third party vendor rather than Apple itself. That weakens the case RZD has against Apple. Additionally, the Swiss clock design was distinctive, with its block-shaped ticks and the rounded end on one of the three hands. The design had even been honored at museums in New York and London. Apple had used almost the exact same design without modification. The cargo app uses the RZD logo, which is just the letters RZD arranged a certain way, but adds the train track. This reduces the likelihood of confusion among users, which again limits RZD’s chance of succeeding in court.
The Cartier case against Apple more closely resembles this suit. In 2009, the French jeweler and watchmaker sued Apple citing its “Fake Watch” iPhone app, which displayed the time using an image of a Cartier watch. Cartier ended up dropping its suit once Apple removed the apps from its store. Perhaps a similar resolution will be reached in this case. Regardless, it is clear that Cartier, SBB, and RZD will not be the last to file trademark suits against Apple over its apps.
* Lena Mualla is a third-year law student at Wake Forest University School of Law. She holds a Bachelor of Arts in Government and International Politics from George Mason University. Ms. Mualla was awarded a Fulbright ETA award to teach in Indonesia following undergrad. She is interested in the areas of banking law and IP law.