Obtaining trade mark registration in the ICT industry is particularly important in order to differentiate your software product or service, in what is often a highly competitive field. Whether it’s a new method of communication, a new game to be addicted to, or something completely different, a registered trademark forms a key part of your overall business assets.
A trademark can be any combination of a letter, word, name, brand, label or symbol. The important thing to ensure is that your trademark is distinctive. In app stores (such as the Apple AppStore or Google Play) it is important consumers are able to download the app they’re after, without confusing your app with someone else’s. It must not be a sign that is substantially identical with, or deceptively similar to, an already registered trademark for goods or services of the same description.
If another app publisher believes that the trademark for your app infringes their intellectual property rights (including a trademark), then they can submit online forms to voice their complaint to the app store.
Upon submitting the complaint forms identifying the disputed app, Apple (or Google, for example) must put both parties in contact with one another in an attempt to resolve this dispute. Google Play encourages anyone who believes that their intellectual property rights are being infringed to contact the developer directly. Should that fail, then use of the online complaint feature is recommended. The ‘developer policy’ of Google Play clearly states that apps infringing another’s intellectual property rights are not permitted.
A claim for an infringement may result in the removal of your app if successful, and will not only result in the loss of users and revenue, but can cause reputational damage to your brand which is difficult to overcome. Therefore, it is recommended that before using your trademark in a public domain, you should engage the services of an IP lawyer or trademark attorney, as well as search the Australian trademark register. (In Australia it is recommended that you search the trademark register as well as searching the app store, which will tell you if the trademark used in connection with your app potentially conflicts with prior trademarks of third parties).
If you are also looking to commercialise your app overseas, it’s important to do searches of the relevant trademarks register in each country, as well as the relevant app store. It is also advisable to apply to register a trademark in each overseas jurisdiction you intend to commercialise the app in. We have previously published an article on filing trademarks overseas which you can access here.
Here are a few tips to avoid rejection or opposition in the trademark application process;
- Do not use a prescribed sign, such as the Australian Flag, the Coat of Arms, or names of cities
- It must be able to be graphically represented
- It must distinguish your goods or services from the goods or services of others
- Do not create a trademark that is likely to result in a significant degree of disgrace, shame or outrage
- Do not use a trademark that will violate other Australian laws
- The trademark will be rejected if it is regarded as being substantially identical or deceptively similar to another registered trademark in respect of similar or closely related goods or services.