What you need to know
- On 14 March 2018, a Delegate of the Registrar of Trade Marks accepted four applications by Apple Inc (Apple) to register the “APP STORE” trade mark in classes 9, 35, 38 and 42.
- The decision follows an unsuccessful appeal by Apple to the Federal Court to have APP STORE registered and signifies the end of a decade of successive attempts by Apple to have the APP STORE trade mark registered in Australia.
What you need to do
- Applicants should be aware that even if a trade mark application is not inherently adapted to distinguish the goods and services sought, extensive use can result in the trade mark application becoming distinctive.
- When seeking to have an application accepted, applicants should consider submitting evidence of third parties referring to the trade mark in isolation, without any additional evidence.
- In order to have applications accepted, applicants should be willing to amend or narrow specific classes of goods and services if provided an opportunity by the examiner or delegate of the Registrar.
Apple launched its software and retail download service under the name APP STORE on 11 July 2008. Users of Apple’s iOS mobile operating system, which operates iPhones, iPods and iPads, were provided a means of having software products directly delivered to their devices.
According to Apple’s evidence, 200 million global users of the APP STORE made 15 billion downloads by July 2011. At this time, the APP STORE in Australia offered 425,000 software programs, with this figure rising to 1 million by December 2014. Australian downloads from the APP STORE in May 2013, numbered 50 billion and rose to 3 billion in the month of December 2013 alone.
Why had Apple been unsuccessful in the past?
On 3 December 2014, in Apple Inc v Registrar of Trade Marks [2014] FCA 1304 (App Store Case), Apple was unsuccessful in an appeal to the Federal Court over an earlier application to register the APP STORE trade mark under the Trade Marks Act 1995 (Cth) (Act) for a broad range of good and services (see our article "App, App and Away – Apple appeals decision refusing registration of APPSTORE trade mark” in the June 2013 edition of IP @ Ashurst on the original Trade Marks Office decision). The Federal Court found APP STORE was not to any extent inherently adapted to distinguish the relevant services at its filing date on 18 July 2008.
On 23 December 2014, Apple applied to register three trade marks in classes 35, 38 and 42 under the Act and on 15 May 2015, Apple lodged a divisional application for a fourth trade mark in class 9.
The Trade Marks Office examiner identified a ground for rejection under section 41 of the Act. To the examiner, the applications’ use of the words APP STORE suggested that the goods or services are provided by a facility or store that supplies computer applications (apps). The examiner considered that other traders of apps should be able to use the words APP STORE in connection with similar goods or services.
Apple requested a hearing before a delegate of the Registrar (Delegate) on the question of whether the examiner had a valid ground for rejecting the applications under section 41. Apple submitted that the examiner’s objection was invalid as the expression APP STORE was capable of distinguishing Apple’s goods and services from those of other traders.
What made the difference this time?
The Delegate gave significant consideration to whether consumers regarded and relied upon APP STORE alone as a badge of trade origin for the goods and services, and was ultimately persuaded on this point in relation to a number of the applications.
In particular, the Delegate:
- found that the expression APP STORE, while not to any extent inherently adapted to distinguish the goods and services, could become distinctive through use;
- considered that while some of Apple’s competitors have used different trade marks to identify their software retail and download services eg Google Play, the competitors do not and have not used APP STORE for the sake of its ordinary meaning;
- stated that the expression APP STORE has often been used by itself, without another mark or identifier, to identify that the services offered under the APP STORE are those of Apple;
- stressed that the level of use of APP STORE at the priority dates was extremely high, with millions of Australian consumers being exposed to and regularly using Apple’s software distribution service identified by the expression APP STORE; and
- highlighted that, unlike in the App Store Case where the expression APP STORE had only been used in Australia for 8 days at the priority date, in the present applications APP STORE had been used extensively in Australia for over 6 years at the priority dates.
Evidence of how the APP STORE trade mark had been referred to by third parties, including media and software developers advertising their products as being available for download on the service, was critical to the Delegate’s decision. The evidence suggested third parties commonly used “APP STORE” without any additional identification to indicate the name of Apple’s software retail and download service. The Delegate considered that the evidence showed that at the priority date the trade mark had become distinctive.
The Delegate did not initially accept the applications in relation to all classes sought due to a lack of sufficient evidence in some broad classes. Apple was provided an opportunity to narrow the applications for class 9 goods and class 42 services, after which the Delegate accepted all applications.
Authors: Caroline Christian, Graduate; and Lisa Ritson, Partner
