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.
