When choosing a trade mark businesses often prefer descriptive
marks that inform consumers about the nature or purpose of a
product. From a legal standpoint a trade mark should be
distinctive. This means that it must not describe any feature of
the product or be reasonably required for use by others. It can be
an invented word like KODAK, or if an ordinary word it must be used
outside of its normal context, such as APPLE for computers.
When therefore Apple Inc. adopted the trade mark APP STORE to
sell software applications for mobile devices its choice of trade
mark sparked interest. As with most things Apple the APP
STORE service was an instant commercial success with an alleged
average of over a million downloads taking place, in 2011, in every
hour internationally on more than 250 million devices resulting in
over 18 billion software downloads.
Before long Microsoft Corp. had launched opposition proceedings
in the USA against Apple's application to register the
APP STORE trade mark. Apple soon discovered that
Amazon.com Inc. had launched its own mobile software download
service using "APPSTORE". Legal action against
Amazon soon followed in the USA. In Europe,
Amazon and Microsoft have joined forces with
Nokia, HTC and others in attempting to invalidate
Apple's registration of the APP STORE trade mark over
the Union countries.
Recent events suggest that the momentum in these clashes is
currently against Apple as it struggles to defend its
argument that APP STORE is not generic. If a mark is generic it is
open for use by all in the industry. In an unexpected turn of
events Apple announced recently that its lawsuit in the
USA against Amazon has been settled. In a statement it
"with more than 900 000 apps and 50 billion downloads,
customers know where they can purchase their favourite apps. We no
longer see a need to pursue our case against Amazon".
It is tempting to conclude that Apple's about-face
in the USA is due to the difficulty of enforcing a descriptive
trade mark. It is simply not easy to prevent third parties from
copying a descriptive mark. A monopoly over a mark seen as
descriptive in the industry is difficult to defend. Now that
Apple appears to be giving up the fight in the USA it will
be interesting to see if it manages any victories over the APP
STORE mark in Europe.
In South Africa the Trade Marks Act, 194 of 1993, allows scope
for descriptive trade marks by providing that a mark should not be
refused registration simply because it is descriptive or has become
generic, and if registered it should not be removed from the
Register, provided that the mark has in fact become capable of
distinguishing. This means that a descriptive mark may be
enforceable if it has been used extensively or widely promoted such
that it actually identifies the products of one business.
When encountered with a descriptive trade mark a South African
court must ask whether, at that date, the mark is in fact capable
of distinguishing the products of the business in question.
Evidence of extensive use of a descriptive mark should generally be
sufficient to prove that the mark designates the products of one
business, unless of-course there are other circumstances present
that cause the effect of the proven use to be deflected in another
If a sizeable portion of Apple's 50 billion
downloads had been carried out by locals the possibility exists
that the APP STORE trade mark would be enforceable locally on
account of market recognition. If, however, a significant portion
of the local market uses Amazon's "APPSTORE"
it would be difficult for Apple to prove that the APP
STORE mark identifies only its products. The primary condition for
qualification as a trade mark, namely, distinctiveness, would not
have been met.
This issue ought to be considered prior to adopting a
descriptive trade mark. The APP STORE saga illustrates that
sometimes even substantial marketing expenditure and wide use may
not be enough to achieve distinctiveness for a descriptive
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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It has always been the practice of the Industrial Property Institute of Mozambique to prohibit the refiling of trade marks that have been finally refused, which has posed a serious obstacle to trade mark applicants...
A recent Australian decision on keyword usage of a registered trade mark is in line with decisions in many other countries, including South Africa.
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