market - Brand Equity Magazine

The merits and demerits of
registering one’s trademark can
be discerned in the Apple/Cisco
controversy.
Most techies will undoubtedly be
aware of the brouhaha surrounding
the launch of the newest member of
Apple Computer’s product line, the
iPhone mobile phone.
The launch of the supposedly
epoch-making product has been
mired in controversy due to the rival
claims of ownership between Cisco
systems and Apple over the name
iPhone.
The following sequence of events,
as gleaned from various articles and
discussions on the Internet, may help
shed some light on the lessons to be
derived from the much publicized
dispute.
In March of 1996, Infogear
Technology Corporation, a technology
and services company focusing
on Internet appliances filed an
application for the US trademark
‘iPhone’, obtaining the registration
in 1999.
The products to which the
trademarks were applied were
computer hardware and software
for providing integrated telephone
communication with computerized
global information networks. This
highfalutin description basically
means a mobile phone which is
capable of surfing the Internet.
In 1998, Infogear released just
such a product calling it the iPhone.
Furthermore, in 2000, Infogear
successfully prosecuted a trademark
infringement claim against the
owners of the iphones.com domain
name.
In June 2000, Cisco Systems
acquired Infogear and its assets,
including the iPhone trademark, and
subsequently launched a range of
Voice over IP (VoIP) sets under the
name iPhone.
Apple launched the iphone
multimedia/Internet-enabled phone
on the 9 th of January, 2007 with an
eye towards emulating the success of
i-Pod portable media players.
Apart from the features that
accompany most models of mobile
phones, Apple’s iPhone has a touch
screen incorporating a virtual
keyboard which requires nothing
more to operate it than bare skin i.e.
one’s fingers. It also has a built in Wi-
Fi enabling it to access the Internet
through its own Safari browser.
Therein lay the seeds of discord
with Cisco. Cisco has contended that
they had been negotiating with Apple
to license their iPhone trademark
and expected Apple to agree to
the final document that Cisco had
submitted on the night of the 8 th of
January.
Apple’s launch was made on
9 th January 2007. On the 10 th of
January, Cisco announced that
it has commenced infringement
Benjamin J. Thompson
proceedings against Apple for using
the iPhone name. Cisco also sought
an injunction in the US federal court
to prevent Apple from using the
iPhone name.
Just as things were beginning
to get exciting, both parties to
the dispute announced that they
had agreed to temporarily suspend
litigation pursuant to talks on
settling the dispute. On the 20 th of
February both parties announced
that they had reached a settlement.
Both parties will be allowed to use
the iPhone name in exchange for
‘exploring interoperability’ between
Apple’s product’s and Cisco’s iPhone.
There has been much speculation
and conspiracy theories on the
various blogs and forums as to
Apple’s real intentions. Chief among
them is that Apple intended to
leverage on their successful iPod,
iBook, iSight, iMovie, iTunes etc.
branding and to lead consumers into
thinking that any brand name with
the prefix ‘i’ naturally belonged to
Apple.
Another is that Apple may have
decided that the risk of Cisco’s suit
was worth the success the product
would have with the magic ‘iPhone’
brand. As conspiracy theories go,
I prefer the one where Cisco and
Apple dreamt up the whole dispute
to guarantee a memorable launch for
the iPhone products, and enormous
exposure in the media ... who knows
for sure?
This dispute, more than anything
else underscores the importance
of registering a brand or mark as
proof of ownership. The mere fact
of registering a mark gives rise to
a cornucopia of rights (including
sale and licensing) that might be
of pecuniary benefit in the most
unimaginable circumstances.
Could Cisco have foreseen that
owning the iPhone mark could in
any way lead to this new alliance
with Apple? Would Cisco have faired
so well if Infogear had not had the
prudence to legally lock down their
rights to iPhone way back in 1996?
The registration system also
affords the mark owner the strongest
protection available for their mark.
Had Apple continued with the sale
of the iPhone without reaching an
agreement with Cisco, they would
be in clear violation of Cisco’s
proprietary rights in the iPhone
mark and Cisco would have been able
to enforce their rights in a court of
law.
The Cisco-Apple saga neatly
illustrates the benefits that accrue
to a mark owner upon registration of
the mark. Let us hope that it serves
as an object lesson to both potential
mark owners and infringers.
To the former, REGISTER your
mark to protect it. To the latter, if a
mark is registered, stay clear of it.
Ben Thompson, a registered
trademark, patent and industrial
designs agent can be contacted at
brandlaw@thompson.com.my
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