Apple Inc is taking its fight to register the APP STORE trade mark in Australia to the Federal Court.

The Registrar of Trade Marks refused registration of Apple’s APP STORE mark for services in class 35, 38 and 42 because it was too descriptive.  Apple has now appealed this decision to the Federal Court.

This Australian decision is a small skirmish in wider battle.  

In the US, Microsoft Corporation’s opposition against Apple’s application for APP STORE has been suspended whilst civil action between Apple and Amazon.com Inc is pending.  One of the issues in that case is whether the term Appstore has become generic.   Meanwhile, in Europe, Apple’s competitors are challenging the validity of its registrations for APP STORE and APPSTORE.

Consumers with an Apple phone, tablet or computer will no doubt be familiar with the APP STORE.  It is probably best described as an online store where purchasers can browse and download applications to their Apple device for a fee or for free.

Would consumers have described an APP STORE in this way back in July 2008 when the Apple trade mark application was filed?  This is one of the questions the Federal Court is likely to consider.

In the meantime, the history of the Australian application will be of interest to trade mark professionals.   Initially, there was no objection to the APP STORE application on the basis the trade mark lacked capacity to distinguish i.e. was descriptive.  Instead, a conflicting mark was identified.  Apple purchased the conflicting mark and its application was accepted for registration.  Unluckily for Apple, acceptance was revoked by the Registrar (who has the power to do so under s.38 of the Trade Marks Act 1995 (Cth) on the basis the mark lacked capacity to distinguish for all the services claimed i.e. on the basis of s.41(5).

Apple clawed back some ground with the s.41(5) objection ultimately maintained for Apple’s class 35 services only.  However, the evidence of use filed to support acceptance of the application was not considered sufficient to warrant acceptance.  Apple then asked the Registrar to hear the matter.

In a blow for Apple, the Registrar went further than the examiner finding the term APP STORE was a purely descriptive term that had no inherent adaptation to distinguish any of the services claimed in the application.  Accordingly, the s.41(6) ground of rejection was raised.

As to acquired distinctiveness, evidence of: more than 850 million application downloads in Australia via the APP STORE since 2008; 10 million application downloads worldwide in first three days of operation; and 5.5 billion downloads worldwide in the first year were not persuasive. Nor was a Newspoll survey of just over 1000 people which found that about 79% had heard of the expression APP STORE and a good portion associated it with Apple or one of its other trade marks.

The Registrar labelled the APP STORE mark a ‘limping’ trade mark due to its use closely with iTunes, Apple, iPhone, iPad or iMac.  According to the Registrar, the mark had not “acquired a meaning that overshadowed its descriptive meaning” and upheld the rejection of the application.

We now await the Federal Court’s decision.

An assessment of whether a trade mark has capacity to distinguish is made as at the date of filing of the application.  Thus, the earlier you file a trade mark application which has the potential to become a generic term the better.  A trade mark professional can advise you on your prospects of securing a trade mark registration and can assist you to overcome objections raised by the Trade Marks Office to registration of a trade mark on the basis it is descriptive or common to the trade.