(By You Yunting) Since John Ternus assumed the role of CEO, Apple has been preparing a significant push into smart home devices. One media outlet, MacRumors, speculated that Apple’s special event on October 13, themed “Welcome Home”, would likely introduce a device named Home View, along with an all-new operating system named Home OS. The reason these two names have come under the spotlight is that two shell companies with unidentified shareholders—believed to be acting on Apple’s behalf—have filed trademark applications for them. Although the names were leaked through this trademark filing channel, Apple’s legal team is not to blame. On the contrary, they deserve a pat on the back for having done their best to delay the disclosure.
Apple’s legal team faces two competing objectives. The first is to delay disclosure of the marks in its trademark applications for as long as possible, thereby keeping Apple’s R&D and product roadmap confidential. As the undisputed leader of the global consumer electronics industry, Apple is under intense scrutiny, and competitors devote considerable resources to monitoring Apple’s intellectual property filings—trademarks, patents and copyrights—for indications of where its R&D is heading. The later Apple files, the later competitors learn of its plans, and the longer it preserves its first-mover advantage.
The second is to file trademark applications as early as possible, to prevent the company’s brand from being hijacked. In the vast majority of countries around the world, trademark rights follow the first-to-file principle—whoever files first obtains the rights. Many large companies file applications for a batch of trendy buzzwords in the tech industry, regardless of whether they will actually use them. In addition, there are numerous squatters who ambush-register trademarks, hoping that a big company will come to buy the mark from them—an easy way to make a small fortune.
The renaming of the Apple Watch illustrates the tension between these two objectives. Apple has favored the “i” prefix for its products; the convention proved highly successful with the iMac and iPhone, but it failed with the iWatch. Apple filed for the iWatch trademark in 2013. However, shortly after the first-generation iPhone was released in 2007, the Swiss Swatch Group anticipated that Apple might enter the watch market and filed for the iSwatch trademark worldwide in 2008. After Apple submitted its iWatch application in 2013, Swatch filed trademark oppositions against it in multiple jurisdictions, on the ground that iWatch was confusingly similar to iSwatch. In the end, Apple had to name its watch product Apple Watch.
In fact, when applying for the iWatch trademark, Apple had already recognized this tension: it needed both secrecy and an early filing date. Therefore, rather than filing in closely watched jurisdictions such as China and the United States, Apple first filed its application in late 2012 in Jamaica, a small Caribbean nation, and filed in other countries only six months later, claiming priority from that earlier filing. Under Article 4 of the Paris Convention for the Protection of Industrial Property, any person who has duly filed an application for trademark registration in one member state of the Union, or his successor in title, enjoys a right of priority for filing in the other member states within six months in respect of the same mark and the same goods. The method is nonetheless far from leakproof: anyone with sufficient diligence can search trademark databases across multiple jurisdictions.
The iWatch case also represents an intermediate stage. At the time, Apple filed trademark applications through shell companies in the United States, but filed in its own name in jurisdictions such as Japan and Russia. Apple has since refined the approach. In recent years, for confidential projects such as Vision Pro, its trademark filing strategy now proceeds on two tracks: applications are filed exclusively through nominee companies, with the initial filing made in a small jurisdiction such as Jamaica where publication is delayed; worldwide filings follow six months later, claiming priority from the initial filing date.
The strategy adds only the cost of incorporating and maintaining an offshore nominee company—a few thousand dollars—which is negligible against the hundreds of thousands, or even millions, of dollars required for Apple to register a single trademark worldwide. Yet it ensures maximum confidentiality for the company’s R&D directions and product names. By any measure, this is a masterclass in intellectual property protection.
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