Comparing Apples with apps

In a previous post (Apple takes a bite out of retail) we reviewed Apple’s US trade mark application for its iconic layout of flagship stores. Closer to home, Apple has stumbled in its most recent trade mark application. The Federal Court of Australia rejected Apple’s application to register the trade mark ‘APP STORE’ due to a lack of distinctiveness.¹

Apple’s application for the ‘APP STORE’

Apple’s 2008 trade mark application was initially accepted. And that appeared to be a sweet victory for Apple. But this bite was not so sweet after all, as the application was later revoked with an objection under section 41(5) of the Trade Marks Act 1995 (Cth) (Act) being raised by a delegate of the Registrar. The delegate found that ‘APP STORE’ was not distinguishable as the mark was ‘purely’, ‘directly’ or ‘inherently’ descriptive. Apple came back with another bite and requested a hearing.

Federal Court: ‘We’ve seen this apple before’

Apple argued that its use of ‘APP STORE’ ‘involved an element of creativity’ and was not a common expression at the time of filing. However, the Court:

did not consider Apple’s expert linguistic and survey evidence to be sufficient to demonstrate that Apple’s use of ‘APP STORE’ was such that the mark distinguished the services as those of Apple, rather than those of other traders;
found that the Registrar’s evidence demonstrated that well before 2008, the word ‘app’ was established and understood as being shorthand for computer application software; and
found that the word ‘store’ was well known among the general public to not be confined to a physical store, but extended to online stores.

It was clear that Apple had not ‘coined a new term’ nor given the word ‘app’ a changed meaning. And without such a bite, Apple was not successful in the case.

If at first you don’t succeed, try, try again

Apple has recently filed a further trade mark application in Australia in classes 35, 38, and 42. This new application has a later priority date and will allow Apple to use more evidence as a result. Surely there remains doubt over whether Apple will succeed in this application.

What was notable in the 2014 Apple case was the level of involvement of the Registrar in the proceedings. Not surprising that Apple had an issue with this involvement. Saying ‘no’ to Apple may be a novel concept, but Registrars have a role to take reasonable steps under the Act to protect public interest in respect of trade mark registrations in Australia.

Without pre-empting the decision, ‘app store’ seems to be so ubiquitous as to have little chance of registration. Let’s consider the legal wrangling to come once the latest application comes to a head.

Apple takes a bite out of retail
The star’s the limit – molto bene

¹Apple Inc. v Registrar of Trade Marks (2014) 109 IPR 187; [2014] FCA 1304