Last week OUT-LAW exposed the legal loophole that could be used
to put the trade mark rights in Apple's hands. A US lawyer has
found a similar loophole there.
Cisco currently holds the trade mark rights to the term iPhone
but Apple last week launched its mobile telephone which it called
iPhone, even though it had been negotiating under 24 hours earlier
with Cisco over a licensing deal. Cisco immediately filed a law
suit claiming infringement of its mark.
In Europe, Cisco's hold on the trade mark is less secure than
was previously thought. OUT-LAW revealed that a revocation
application filed by a German law firm could exploit the fact that
the mark appears not to have been used in Europe for over five
years prior to the 18th December launch of iPhone products.
That application was filed on 18th December, the very day on
which Cisco launched its products. Trade mark law in Europe states
that a mark must be used and if it lies idle for five years it can
be challenged.
A similar law has been reported in the US, where in order to
keep a trade mark a company has to file a Declaration of Use to the
US Patents and Trademarks Office by the sixth anniversary of the
registration of the mark.
Cisco did this, but the photographic evidence it presented in
its filing was of an existing Cisco product with a sticker saying
'iPhone' put on the outside of the packaging. This may not
constitute use for the purposes of the law, said an expert.
Jay Behmke, a partner at trade mark law specialists CMPR in the
US, told Ed
Burnette's ZDNet blog in the US that the company's filing
may not be good enough.
"It is possible that the Declaration of Use is defective, as
there was no continuous use, and the sample that Cisco submitted
was for a product not released until seven months later," he said.
"The fact that the Declaration of Use was submitted only days
before the deadline expires gives me the impression that they were
scrambling to get a product to market, and had to file the
Declaration before the product was ready."
A Cisco spokesman, John Noh, rebutted the claims. "We maintain
that Cisco has taken all actions necessary to satisfy all elements
to prove the validity of our trade mark under trademark law in the
United States and elsewhere where we hold the trade mark," he told
Burnette's blog.
