Trademark dispute could further delay Apple iPhone in Canada

A dispute between Apple Inc. and Toronto-based Comwave Telecom Inc. over the Canadian trademark rights to the name "iPhone" has yet to be resolved, adding another barrier to the launch of Apple's next-generation handheld device north of the border.

Comwave, which markets a collection of voice-over-internet services and products under the name iPhone, has filed its opposition with the Canadian Intellectual PropertyOffice,orCIPO, to Apple's trademark application for the proposed use of a handheld and mobile device called the iPhone in Canada.

The dispute, currently under review, could further delay the Canadian arrival of the Apple iPhone — a handset with a touchscreen interface, sleek design and both Wi-Fi and cellular service that has already sold over one million units in the United States since its launch in June. It will hit store shelves inBritain and Germany in time for the holiday season.

Since the Apple iPhone launch in the U.S., there has beenheavy speculation as to when the device would come to Canada.Last week a rumour surfaced that retailer Holt Renfrew would be selling the iPhone in Canada before the end of October. Holt Renfrew has since denied the rumour, but not before the story appeared on several prominent technology websites.

Thebiggest stumbling block to the Apple iPhone launch in Canada remains a lack of adeal with a phone carrier, and so far no deal has been reached between Apple and Rogers Wireless, which is the only Canadian provider using the GSM(Global System Mobile) communications standard needed to run the iPhone. Before a deal could be reached, however, Apple would also need to secure the rights to the name "iPhone."

The dispute between Apple and Comwave is similar to one earlier this year in the United States between Apple and Cisco Systems, which claimed ownership of the iPhone name in that country. Apple and Cisco settled their dispute with an agreement to share the trademark before Apple launched the iPhone to much fanfare on June 29.

'Co-existence is not possible'

Comwave president Yuval Barzakay told CBC News that sharing the trademark would not be practically possible, however, because of the reach and extent of Apple's brand marketing.

"The force they put into marketing would quickly make the brand Apple's and not ours," he said. "It's a case of hijacking the brand. If I asked people on the street who owns the iPhone trademark in Canada, they'd all say Apple. And their product isn't even in the market. So co-existence is not possible."

Comwave said its voice-over-internet products and services are available in 500 communities across Canada. Italso makes a product called the iPhone Mobile, a wireless device offering VOIP service.

Apple filed a trademark application for a mobile digital electronic device called the iPhone in October2004. In 2005, after the application was advertised — a standard step before a trademark can become registered — Comwave filed an opposition to the application, arguing it had been using its iPhone service in Canada since June 2004.

Who came first?

A trademark can be claimed in one of two ways, said Philip Kerr, a Canadian intellectual property lawyer. One is to establish use in the country, while the other is to register the intention for use. As a general rule, whoever gets there first will get the trademark.

The issue, then, in the Apple-Comwave case is whether Comwave can establish that it was using the iPhone brand in June 2004, three months before Apple filed its application, Kerr said.

A common name, however, is not enough to oppose a trademark application, said Cynthia Rowden, a lawyer with Canadian law firm Bereskin & Parr. Comwave will also have to prove that the entrance of Apple's iPhone will lead to confusion in the marketplace.

Both companies have gone ahead with separate trademark applications since Apple CEO Steve Jobs first announced his company's version of the iPhone at the MacWorld conference on Jan. 9, 2007.

On Jan. 24, Comwave applied for a trademark for telephones and telephone adaptors under the name "iPhone mobile," while in August 2007 Apple filed a trademark application for a design logo with the name "Works with iPhone," for use with peripheral devices to its mobile handset. Kerr and Rowden said both of these claims are likely to be set aside by the trademark office until the original dispute is resolved.

Another application filed

Further confusing the fight over the name is a July 9 application by a Delaware-based company called Ocean Telecom Services LLC.

Before settling their U.S. dispute with Apple earlier this year, Cisco Systems had filed a lawsuit in which it alleged, among other claims, that Ocean Telecom was acting on behalf of Apple.

Sheldon Burshtein, an intellectual property lawyer and partner at Blake, Cassels & Graydon LLP, the firm representing both Apple and Ocean Telecom, said his firm could not comment on the dispute. But he said that Ocean Telecom was related to Apple.

"Ocean is not a third party in this dispute," Burshtein told CBC News.

Apple could not be reached for comment.

Discussions ongoing

On the surface, the Ocean Telecom claim makes little sense,Rowden said.

"Their application is for July 2007, so they are already late to the party," she told CBC News. "And if they are acting on behalf of a company like Apple, well, Apple already has an application."

The Ocean application, however, covers a much broader scope than either the Apple or Comwave claims, including everything from clothing, footwear and periodicals to a host of services related to telecommunications, all under the name iPhone.

It was also filed six months after Ocean filed similar claims in the United States. Under Canada's trademark rules, a trademark application's original filing date in another country can be considered its de facto filing date, as long as it reaches the Canadian Intellectual Property Office within six months of the original claim.

Genevieve Cote-Halverson, a spokesperson for CIPO, said Ocean's application would likelybe handled after the Apple-Comwave dispute is settled. Should Apple be successful in establishing its claim, the next step for the company would be to register its trademark.

The two sides could also settle their dispute before the CIPO makes a decision. Barzakay told CBC News that his company has been in talks with Apple, "but those discussions have not led to an agreement."

"Our position is Apple has one of two choices: they can either walk away from the trademark and let us keep the iPhone name here in Canada, or they can buy the brand from us," he said.