In March this year, Apple Inc brought proceedings against Amazon Inc and Amazon Digital Services, Inc (together, Amazon) for infringing Apple’s “App Store” trade mark through use of the phrase “Amazon AppStore for Android”. Further to those infringement proceedings, Apple sought a preliminary injunction on the basis of its opposed trade mark application for “App Store” in Classes 35, 38 and 42 (US Application No 77525433) and also on the basis that “App Store” is a common law trade mark which is so well known that Amazon’s use of the word “AppStore” infringes the mark and causes dilution and tarnishment. The application for the preliminary injunction came before Judge Hamilton of the North California District Court and a decision was issued on 6 July 2011.

In the United States it is possible to claim trade mark infringement on the basis of a legally protectable trade mark.1 In support of the injunction, Apple argued that “App Store” is a legally protectable trade mark, being suggestive rather than descriptive as it requires consumers to use imagination or multistage reasoning to understand the mark’s significance. Apple also argued that because Amazon’s services are delivered via the internet and Amazon is authorised to sell other products provided by Apple, unsophisticated consumers were likely to be confused as to the origin of the services. Amazon countered with arguments that the words “App Store” are generic and descriptive and therefore not protectable. Amazon also argued that even if the words “App Store” are not generic, Apple could not demonstrate any likelihood of confusion or meet the requirement of a clear demonstration of confusion in order for the injunction to be granted.

Without firmly siding with either party, Hamilton J refused to grant the preliminary injunction for the following reasons.

  • The words “App Store” are not purely generic but neither are they suggestive as no leap of imagination is required to understand what the words mean.
  • Apple did not establish a likelihood of confusion — Amazon’s website clearly stated that the services related to Android smart phones only and therefore not to Apple smart phones.
  • In relation to Apple’s claim of dilution, the “App Store” mark is not famous in the sense of being prominent and renowned, which requires a showing that the trade mark is more than distinctive. Because the words “App Store” lack distinctiveness and the term is used by other parties in a descriptive manner, Apple was unable to show any likelihood of dilution by blurring or tarnishment.

This matter has been set down for full trial in October 2012. However, Apple’s “App Store” application is currently under opposition by Microsoft Corporation on the basis that the trade mark is generic and descriptive and the opposition is pending before the Trademark Trial and Appeal Board. Although the present decision only relates to Amazon’s use of the word “AppStore”, Judge Hamilton’s comments regarding the distinctiveness of the “App Store” mark are likely to also have an effect on the opposition proceedings brought by Microsoft.