Apple Inc is taking its fight to register the APP STORE trade mark in Australia to the Federal Court.
The Registrar of Trade Marks refused registration of Appleâs APP STORE mark for services in class 35, 38 and 42 because it was too descriptive. Apple has now appealed this decision to the Federal Court.
This Australian decision is a small skirmish in wider battle. Â
Consumers with an Apple phone, tablet or computer will no doubt be familiar with the APP STORE. It is probably best described as an online store where purchasers can browse and download applications to their Apple device for a fee or for free.
Would consumers have described an APP STORE in this way back in July 2008 when the Apple trade mark application was filed? This is one of the questions the Federal Court is likely to consider.
Apple clawed back some ground with the s.41(5) objection ultimately maintained for Appleâs class 35 services only. However, the evidence of use filed to support acceptance of the application was not considered sufficient to warrant acceptance. Apple then asked the Registrar to hear the matter.
In a blow for Apple, the Registrar went further than the examiner finding the term APP STORE was a purely descriptive term that had no inherent adaptation to distinguish any of the services claimed in the application. Accordingly, the s.41(6) ground of rejection was raised.
The Registrar labelled the APP STORE mark a âlimpingâ trade mark due to its use closely with iTunes, Apple, iPhone, iPad or iMac. According to the Registrar, the mark had not âacquired a meaning that overshadowed its descriptive meaningâ and upheld the rejection of the application.
We now await the Federal Courtâs decision.
An assessment of whether a trade mark has capacity to distinguish is made as at the date of filing of the application. Thus, the earlier you file a trade mark application which has the potential to become a generic term the better. A trade mark professional can advise you on your prospects of securing a trade mark registration and can assist you to overcome objections raised by the Trade Marks Office to registration of a trade mark on the basis it is descriptive or common to the trade.