In March 2013 we reported that Apple Inc. (“Apple”) had appealed a decision of the Australian Trade Marks Office to refuse Apple’s application to register APP STORE on the ground that the mark was not capable of distinguishing Apple’s services from those of other traders.

The background to the matter and our analysis of the earlier decision is available here.

The Federal Court of Australia has considered that matter afresh in light of new evidence and argument. In this regard, Yates J has also found that Apple’s APP STORE mark was not to any extent inherently adapted to distinguish the designated services as at the filing date.

The evidence

Apple relied upon expert linguistic evidence asserting that “APP STORE” cannot be understood by simply combining the meanings of its component parts, and can only be fully understood “non-compositionally”. Yates J criticised this expert linguistic evidence, in part because it was largely argumentative and directed towards the expert’s own understanding of Apple’s service rather than the broader services for which Apple was seeking registration.

Apple also criticised the role of the Registrar of Trade Marks for adopting “an overly active role” in obtaining expert evidence from third parties, including evidence on behalf of Microsoft Corporation. Yates J noted that the Registrar, as a party to the proceeding, should not be criticised for advancing a case for the Court’s consideration contrary to the evidence filed by Apple.

The decision

Yates J was satisfied that prior to 2008 the term “app” had a well-established and well-understood meaning as a shorthand expression for computer application software. It was found that members of the public seeking to acquire application software would have understood APP STORE as no more than an expression to describe an online store where application software could be acquired. As such, it was found that APP STORE was not to any extent inherently adapted to distinguish the designated services in 2008. Apple therefore needed to establish factual distinctiveness though use under s 41(6) [now s 41(3)].

Yates J found that the relevant date for considering distinctiveness, and in particular factual distinctiveness, was the actual filing date of 18 July 2008 and not the convention priority date of 7 March 2008. This date was critical because Apple launched its App Store service worldwide on 11 July 2008. If the priority date was the date at which factual distinctiveness was to be determined, there would be no use of the APP STORE trade mark and Apple would fail at the outset.

Ultimately, Apple’s evidence of use of just eight days was insufficient to establish that APP STORE did in fact distinguish Apple’s services as at the filing date. The Federal Court decision is available here.

Comment

Although Apple has again been unsuccessful in registering its APP STORE trade mark, this may not be the end of the story. This decision was handed down on the same day as another important decision of the High Court of Australia which considered when a trade mark is inherently adapted to distinguish.

Our analysis of that case is available here.

It remains to be seen whether Apple will appeal the Federal Court’s decision in light of the majority decision of the High Court, which arguably lowers the bar for when a mark will be considered “inherently adapted to distinguish”.