Apple Inc v The Registrar of Trade Marks  FCA
Trade marks which lack distinctiveness and have not acquired
distinctiveness through use
A launched its App Store in Australia on 11 July 2008.
One week later, it applied to register APP STORE as a trade mark
for retail store services featuring computer software in class 35
and in classes 38 and 42, TM App No 1252301. Note: A has an
existing registration for APPSTORE in classes 35 and 42 accepted in
2006 without adverse report by the Trade Marks Office.
The Registrar rejected the application on the grounds that it
had no inherent capacity to distinguish and A had made insufficient
use of the mark before the application was filed to establish any
reputation in the mark.
A appealed to the Federal Court arguing that while
"app" was understood as an abbreviation for
"application", that understanding was limited to more
technical people and the meaning of "store" was
understood as a physical store, not a virtual online market.
COURT DECISION AND REASONING
The Registrar correctly rejected the application on the grounds
that it lacked distinctiveness.
Distinctiveness is assessed as at the application date not the
earlier claimed Convention priority date (7 March 2008) [this
finding could be important in some cases but was not determinative
A's contentions about the general understanding of
"app" and "store" were not supported by the
evidence including various prior publications referred to
"apps" and even A's own iTunes store established in
Apple's Newspoll survey was discounted firstly because it
was conducted in 2011 (3 years after the application) and secondly
because all it did was show an association between A and the phrase
rather than people identifying the phrase as a badge of origin with
A as the source.
It followed that members of the public would have understood an
app store as a place to buy software online rather than something
unique to A – there was no inherent capacity to distinguish
and the words bore no more than their ordinary signification as
used by A.
A's evidence of acquired distinctiveness was insufficient
(perhaps not surprising given the use began only 1 week before the
Marks consisting of ordinary English words including
abbreviations are difficult to register where they are essentially
descriptive of the relevant goods or services. Substantial evidence
that the public identifies the words with the applicant as a source
or badge of origin is required. Mere association is
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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