January 26, 2007 12:46 PM PST

Cisco faces iPhone trademark challenge in Canada

A Canadian telecommunications company has sent Cisco Systems a letter of warning alleging the networking giant is stepping on its use of the iPhone brand.

The issue could be particularly sticky for Cisco because earlier this month it filed its own iPhone trademark infringement lawsuit against Apple in U.S. federal court. In the Canadian dispute with Comwave Telecom, Cisco is more circumspect.

"We recently became aware of Comwave and we're investigating the issue thoroughly," said Cisco spokesman John Noh.

Comwave, the second largest VoIP service in Canada, has been using the iPhone name for the service since 2004.

"Our legal department has put Cisco on notice," said Yuval Barzakay, president of Toronto-based Comwave. "We will see how they react and then gauge our next action."

Comwave does not hold a registered trademark for iPhone, but has filed an application for one. The Canadian Intellectual Property Office bases its trademark awards on such issues as who was first in using the brand name in Canada or in applying to register the name, say experts in the trademark registration field.

"There has been a Comwave iPhone for years, and, (according to)Canadian law on first use, iPhone is ours," Barzakay said.

Cisco began shipping iPhone VoIP devices worldwide last year and accelerated its global marketing campaign when it introduced two new iPhone products last month, Noh said. Previously, iPhone was sold by Infogear, which Cisco acquired in 2000. It is not clear whether the Cisco's iPhone products were only sold in the U.S., or in Canada, as well.

According to records with the Canadian Intellectual Property Office, Cisco, via Infogear, had filed an application to obtain a trademark for the iPhone name in 1998, but abandoned those efforts in mid-2003.

In 2004, Apple filed an application for use of the name iPhone with the Canadian Intellectual Property Office. And within several months, Comwave filed a motion to oppose that application, Barzakay said.

Comwave, which filed its own application to register the trademark in 2005, alleges it has had the longest use of the name--over Apple and Cisco.

Canadian trademark experts note it will likely take another two to three years before the Canadian Intellectual Property Office awards the trademark.

"I find it peculiar that Apple would launch a flagship product without securing its own trademark first," Barzakay said. "They certainly could have used a lot of other names."

In its U.S. lawsuit, Cisco alleges Apple debuted its iPhone mobile device, even though it had warned the computer maker it would infringe on Cisco's trademark for its VoIP phones. Apple is planning to ship the iPhones in June.

Apple was not immediately available for comment.

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Cisco Systems Inc., trademark, Apple iPhone, Canada, VoIP

9 comments

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iPhone?
I thought about the name iPhone in at least 2003. Do I get something too?
Posted by airwalkery2k (117 comments )
Reply Link Flag
Dont be a twit....
When this first errupted, I did a quick google search on the term iPhone and not Apple.

Found the Comwave site and one other. As well as an article by a college student.

The bottom line...

Cisco can loose the trademark because they didn't try to protect it.

And the courts can decide that no one can have the trademark.

Can you say Kleenex?
Posted by dargon19888 (412 comments )
Link Flag
Just call it iNewtonphone -grin (nt)
No Text
Posted by john55440 (1020 comments )
Reply Link Flag
VERY unlikely...
The worse that could happen is Cisco to lose the iPhone trademark *in Canada* only. As the article mentions, Comwave had not registered the trademark in Canada or elsewhere.

The most likely scenario is Cisco will settle with Comwave for the rights to use the name in Canada.

It's bad news for Apple, because they now have to fight (or make deals) with both Cisco *and* Comwave, in the US and in Canada.

Didn't Apple research the name before deciding to use it? Unlike in Canada, iphone is a registered trademark in the US, and has been so for over a decade.
Posted by mbenedict (1001 comments )
Reply Link Flag
Apple is now third in line for the name
So... Apple will now have to fight Cisco and Comwave to use the name they have decided to steal from two other companies.

The article says it may take up to two years for this to be resolved, which will definitely eliminate Apple's ability to sell the product in Canada until this is resolved. If they do try to sell the iPhone in Canada, then Comwave can sue Apple for all sales made in that country plus damages. This could be very very expensive for Apple if they continue this path of self destruction.
Posted by Vegaman_Dan (6683 comments )
Link Flag
Surely it's a generic term by now, so...
... let all companies that are using it (about a dozen), just keep
using it.

To distinguish them from each other, they and new publications
can just say the Apple iPhone or the Cisco iPhone or the Comwave
iPhone or the Cidco iPhone, etc, etc.
Posted by dotmike (154 comments )
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