Apple not appy with Federal Court decision on APP STORE trade mark

This article was first published in the Lexis Nexis Australian Intellectual Property Law Bulletin (newsletter) March/April 2015

KEY POINTS

This case was decided using the form of s 41 of the Trade Marks Act 1995 (Cth) which applied prior to the amendments introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth). The mark was found to be not registrable as it was not to any extent inherently adapted to distinguish the designated services in classes 35, 38 and 42, and Apple failed to establish that because of the extent to which it had used the mark before the filing date, it did distinguish the designated services as being Apple services. The registrability of a mark (including whether it is capable of distinguishing the applicant's goods and services from the goods or services of others) must be assessed with regard to the scope of the registration which is sought, and in particular, to both: the nature of the mark itself (with word marks necessitating a more restrictive approach owing to the breadth of the monopoly they convey to the owner); and the specification of the goods or services for which registration is sought (rather than by reference to precisely what goods and/or services the applicant actually does provide). Survey evidence is of limited value in that it will usually only serve to show an association between the mark and the applicant, not that use of the mark as a trade mark by the applicant prior to filing date has brought about that association, which is what is required to be established by the applicant, under the former s 41(6). If this case had been decided using the current form of the section, the result would have been the same, as the former s 41(6) essentially survives in a redrafted form as s 41(3). THE LEAD UP TO THIS CASE

The writer mused in an article in an Australian Intellectual Property Law Bulletin back in September 20131 about Apple, and Microsoft, and trade marking store layouts and architecture in general, finishing off with a few remarks about virtual stores.

At that time Apple had just dropped its suit against Amazon in the United States for its use of the term "Appstore", saying in a statement that "with more than 900,000 apps and 50 billion downloads, customers know where they can purchase their favourite apps",2 suggesting that the Apple App Store's success had made the proceedings unnecessary.

Meanwhile, back in Australia, (where Apple also owns the trade mark "APPSTORE"3 ), Apple has been fighting a long, and so far very unrewarding, fight to obtain registration of the word trade mark "APP STORE".

After filing its application for the mark on 18 July 2008 and receiving an...