Apple sued in trade mark dispute over Animoji

Apple was accused of trade mark infringement by a U. S. citizen living in Japan a few days ago. The point of contention is the word mark “Animoji”, important for the new iPhone X.

Animoji is registered trade mark of plaintiff

The famous smartphone manufacturer introduced its new iPhone X just a few weeks ago, which will be launched on November 3rd. And that’s exactly what the argument is about: Apple gave the 3-D animated characters in Emoji style in his new flagship the name Animoji. The plaintiff states that he invented the name Animoji in 2014 and had it registered at the American Patent and Trademark Office (UPSTO) as early as 2015.

Apple’s App Store distributed Plaintiff’s App “Animoji”

The dispute over trademark rights is heard before the United States District Court, Northern District of California (case 3:17-cv-05986). The plaintiff is Enrique Bonansea, a U.S. citizen living in Japan. Enrique Bonansea is an independent software entrepreneur who worked on projects for Microsoft, Adobe, Nike and others in the 1990s as part of an entrepreneurial alliance called “emonster, Inc.”. In 2003 he moved to Japan, where he has a Japanese cooperation called “emonster k. k.”.

The plaintiff was known to the Apple company because Mr. Bonansea operated and operates a messaging app called Animoji, which is distributed through the iOS App Store. Bonansea’s Animoji app has been downloaded more than 18,000 times, according to his own statement. Animated texts are sent with the app.

Apple filed application for cancellation of Animoji’s trade mark protection

In the petition, Enrique Bonansea states that Apple tried to buy the Animoji brand shortly before the launch of the iPhone X. The court will have to clarify whether this is true. According to Mr. Bonansea, in the summer of 2017, a company called The Emoji Law Group LLC contacted him in order to buy his trade mark brand. This Emoji Law Group LLC is allegedly a shell company of Apple. In September, shortly before the launch of the new iPhone X, Apple filed a petition with the U. S. Patent and Trademark Office to have the Animoji brand deleted. Since the deletion has not yet been decided, this is an indication that Apple was aware that Animoji is currently a protected term. This means that Apple has deliberately committed the trademark infringement of the term Animoji.

In the pending case concerning the cancellation request, the court will also have to clarify the facts. Bonansea originally protected the controversial term “Animoji” under the name of the company “emonster, Inc.”. Apple claims that “emonster Inc.” did not exist when the registration was originally filed. The plaintiff asserts that the trademark entry was only registered by an error on the “emonster Inc” and should have been registered on “emonster k. k.” instead. And that this error was corrected very quickly. Whether rightfully or wrongly, the ANIMOJI mark has been registered with the American Patent & Trademark Office as a standard sign, without claiming any particular font, style, size or colour (Reg. No. 4,712,559) – and “FOR USE IN ANIMATING, PROCESSING, AND TRANSMITTING IMAGES, IN CLASS 9”.

If the lawsuit against Apple is successful, the case will be very expensive for the iPhone manufacturer: in addition to the financial loss, the reputation of the new flagship iPhone X would also be damaged. The complaints include trademark infringement and unfair competition. The judgement is eagerly awaited.

Are you suspected of having infringed trademark rights or is a competitor violating your rights?

Then we should talk to each other, because this is nothing to joke about! Our lawyers advise you individually and together with you develop the right strategy to protect your brand.