Neil Melliship

iPhone Gets Its First Busy Signal

By In Branding, Protection & Enforcement

It didn’t take long for Cisco Systems to take a run at Apple, Inc.’s newly unveiled iPhone. Cisco owns a U.S. Trademark Registration for IPHONE in association with “computer hardware and software for providing integrated telephone communication with computerized global information networks”. Cisco has filed a lawsuit against Apple in the U.S. alleging trademark infringement among other things. Cisco alleges that up to the night before Apple’s introduction of the iPhone on Tuesday of this week at Macworld Expo, Apple and Cisco were negotiating the terms of an agreement that would have permitted Apple to use the mark.

There appear to be other entities using the iPhone mark for VoIP services, some of which have also filed applications to register the mark in association with such services. Cisco, in its lawsuit, alleges that Apple is applying to register the iPhone mark in the U.S. via a related or alter ego company called Ocean Telecom Services LLC. of 2004 on a proposed use basis.

Apple filed an application to register the mark iPhone in Canada in October of 2004 on a proposed use basis. That application is currently being opposed by Comwave Telecom Inc. Comwave  filed its own application for the mark iPhone in Canada, claiming use of that mark in Canada since June of 2004 for use in association with VoIP services.

The Source Once Again A Source of Trademark Problems

By In Branding, Protection & Enforcement

Circuit City continues to encounter trademark problems in Canada with its chain of retail consumer electronics stores. When Circuit City purchased the chain of 870 plus stores from Radio Shack 18 months ago, it was forced to incur substantial costs to re-brand them as The Source by Circuit City. Now, a smaller chain of photo shops called Foto-Source Canada Inc. has applied to the Federal Court of Canada seeking an order that Circuit City cease using The Source as part of its name.

Foto-Source contends that it adopted the slogan “Get it right, from the source” in 1994. Both parties have filed applications to register their respective trademarks in Canada but neither application has been published for opposition yet.

Scotch Distilleries Protest Use Of Glen With Canadian Whisky

By In Branding, Protection & Enforcement, Trademark Oppositions

The Scotch Whisky Association is battling a Cape Breton distiller of whisky over its use of the word Glen in its trademark. The Association, which represents the owners of well known brands such as Glenfiddich, Glenlivet and Glenmorangie, is concerned that consumers will assume that Glen Breton Rare single malt whisky, produced by Glenora Distillery, is a scotch whisky.

The Association argues that the word “Glen” is too closely linked to scotch whisky for anyone other than Scottish producers to use.  “Scotch Whisky” itself is a designation that is protected under the federal Trade-marks Act for use only with whisky produced in Scotland.

The Canadian distillery, which has applied to register the mark GLEN BRETON, argues that Cape Breton, where it is based, has very strong Scottish roots because it was settled by the Scottish over 200 years ago. The region is riddled with towns and villages that contain the word “Glen”, which means a place at the base of highlands or mountains. The Association has opposed the GLEN BRETON trademark application. Lawyers for both sides recently presented oral arguments and a decision of the Opposition Board is still months away.

RIM Battles Samsung Over Use of BlackJack

By In Branding, Famous Marks, Protection & Enforcement

Canadian based Research in Motion is suing Samsung over its use of the mark BlackJack in association with a recently launched smart phone device. The Samsung smart phone competes directly with RIM’s BlackBerry Pearl smart phone. In the lawsuit, filed in California, RIM argues that the BlackJack name will cause confusion with consumers who are familiar with the established BlackBerry brand, as well as constituting false designation of origin, unfair competition and trademark dilution.  Interestingly, both devices are offered on Cingular’s network in the U.S.

Apple Not Asserting Rights Over The Term Podcast?

By In Protection & Enforcement

According to the GlobalGeek Podcast, Apple Computer apparently doesn’t object to use of the term “podcast” if it’s used to generically describe podcasting services. At first blush, this might be interpreted as a bit of a departure from Apple’s recently aggressive stance in terms of all things “POD” and “IPOD”. On the other hand, Apple may just be differentiating between generic use of the term podcast and use of that term as part of a third party trade-mark.

900,000th Mark Registered Under International Trademark System

By In Foreign Protection, Registration

A recent press release from WIPO (the World Intellectual Property Organization) heralds the 900,000th registration under the International Trademark System, commonly known as the Madrid Protocol or system.

The Madrid system allows an applicant from a signatory country to potentially obtain protection for its mark in up to 77 member countries and the European Union by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). An International Registration obtained through the Madrid system can be maintained and renewed through a single procedure at WIPO.

The system is designed to provide a cost-effective and efficient way for trademark owners to secure protection for their marks in multiple member countries through the filing of one application. While there are debates about how well the Madrid system attains that goal, it certainly gives applicants from member countries another powerful option for international trade-mark protection strategies.

Unfortunately for many Canadian trademark owners (namely those without a presence in a Madrid protocol signatory country), this option is not available to them because Canada, alone among most developed (and many developing) countries is not a signatory to the Madrid Protocol, nor is it likely to be for at least several years. The recent accession of both the U.S. and the EU to the Madrid system has awoken the Canadian Intellectual Property Office (“CIPO”) to the need for Canada to seriously consider joining, but the process is moving very slowly. In 2002, CIPO published an analysis of the issues that need to be addressed in order for Canada to acede to the Madrid Protocol and in 2005 CIPO solicited comments from Trade-mark professionals as to the proposed modernization of Canadian Trade-mark law, including adherence to Madrid. The issue has gained little public attention and given the other priorities of the minority governments in Canada of the past several years, it’s likely to languish for several more years.