Apple has failed in its attempt to register “APP STORE” as a trade mark, after the Federal Court rejected its appeal.
What did Apple say?
Apple argued that when it originally filed the trade mark application in 2008, “APP STORE” was not a common English expression and therefore nobody else would have thought to use it at that stage. Apple also argued that it had been using “APP STORE” prior to the filing date, so as at 2008 the expression distinguished Apple's services and no one else’s.
What did the Court say?
In short, the Court said nah-ah.
The Court said the public would have understood “APP STORE” as no more than an expression to describe a store by or through which application software could be acquired and that other traders would have wished to use the words “APP STORE” in some form to describe the same trade channel and activity.
In relation to Apple's assertion of prior use of the expression, the Court noted that this had only been for 8 days before filing and there wasn't enough evidence that "APP STORE" had in that short time already distinguished Apple's services
The main issue for Apple was that although many people associated the App Store service with Apple, this was not the same as saying that the way Apple used “APP STORE” in practice was such that the mark distinguished the designated services as being just Apple’s services and not those also of other traders.
It’s not all bad for Apple. It still has trade marks for “Appstore” and the logo “Available on the App Store”.
What to take out of this?
- When you obtain a “word” trade mark you are getting a monopoly in the use of the words as a trade mark, in whatever form – i.e. stylised or otherwise. Make it unique. Do not try for descriptive words or you’ll risk getting knocked back.
- It’s not the end of the world if you can't register the word mark. You can always create a composite, i.e. a logo or word and image combination with those words in it. Think “Chicago”, the band – an oldie but a goodie.
- You can file divisional applications, which means that your trade mark application is effectively split into a number of separate applications in respect of particular goods and services. This is a good protective measure if your applications or marks are ever challenged, because although you might lose one in respect of certain goods or services, you may be able to keep the others.