Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 (3 December 2014)

In 2008, Apple applied to register its APP STORE trade mark in respect of retail services, telecommunications services, and information technology services. The Trade Marks Office objected to the application’s retail services on the grounds that APP STORE is a term that is likely to be needed by others to describe similar services, that is, a type of store.

In 2013, Apple requested to be Heard by the Trade Marks Office on the issue and adduced significant evidence of its use of the trade mark APP STORE, as well as survey evidence attesting to the recognition of the APP STORE trade mark by the general public.

Having considered the evidence led by Apple, the Trade Marks Hearing Officer concluded that ‘at the filing date’ (2008) the trade mark APP STORE had not acquired a meaning related exclusively to the applicant, which overshadows its descriptive meaning. The APP STORE trade mark application was rejected not only for the retail services, but also the telecommunications and information technology services.

Apple appealed the decision of the Trade Marks Hearing Officer to the Federal Court of Australia. The Judgement of Yates J was handed down yesterday with Apple being unable to register its APP STORE trade mark in respect of any of the services for which it originally applied.

In making his decision, his Honour noted that the terms ‘app’ and ‘store’ were both common English words and when used together these common words carried a well understood meaning in the English language.

His Honour also noted that the evidence of Apple’s use of its APP STORE trade mark (at the filing date) fell short of establishing that the term APP STORE, on its own, would have been recognised by members of the public as referring only to Apple.

Apple has 21 days to file an appeal against this latest decision on its APP STORE trade mark. If it does not appeal, it may file a new application (moving the filing date and improving its evidence), or it may rely on its current Australian trade mark registration for APPSTORE (which was previously accepted by the Australian Trade Marks Office without objection).