Apple has failed in its attempt to register "APP
STORE" as a trade mark, after the Federal Court rejected its
What did Apple say?
Apple argued that when it originally filed the trade mark
application in 2008, "APP STORE" was not a common English
expression and therefore nobody else would have thought to use it
at that stage. Apple also argued that it had been using "APP
STORE" prior to the filing date, so as at 2008 the expression
distinguished Apple's services and no one else's.
What did the Court say?
In short, the Court said nah-ah.
The Court said the public would have understood "APP
STORE" as no more than an expression to describe a store by or
through which application software could be acquired and that other
traders would have wished to use the words "APP STORE" in
some form to describe the same trade channel and activity.
In relation to Apple's assertion of prior use of the
expression, the Court noted that this had only been for 8 days
before filing and there wasn't enough evidence that "APP
STORE" had in that short time already distinguished
The main issue for Apple was that although many people
associated the App Store service with Apple, this was not the same
as saying that the way Apple used "APP STORE" in practice
was such that the mark distinguished the designated services as
being just Apple's services and not those also of other
It's not all bad for Apple. It still has trade marks for
"Appstore" and the logo "Available on the App
What to take out of this?
When you obtain a "word" trade mark you are getting a
monopoly in the use of the words as a trade mark, in whatever form
– i.e. stylised or otherwise. Make it unique. Do not try for
descriptive words or you'll risk getting knocked back.
It's not the end of the world if you can't register the
word mark. You can always create a composite, i.e. a logo or word
and image combination with those words in it. Think
"Chicago", the band – an oldie but a goodie.
You can file divisional applications, which means that your
trade mark application is effectively split into a number of
separate applications in respect of particular goods and services.
This is a good protective measure if your applications or marks are
ever challenged, because although you might lose one in respect of
certain goods or services, you may be able to keep the others.
We do not disclaim anything about this article. We're
quite proud of it really.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).