Apple loses appeal to trademark ‘App Store’ in Australia

PanARMENIAN.Net - In a blow to Apple, Australia's Federal Court has rejected an appeal by the technology giant to trademark the term "app store", Sydney Morning Herald reports.

The Registrar of Trade Marks refused registration of Apple's "app store" trademark in March last year because it was too descriptive. Apple then appealed this decision in the Federal Court.

Microsoft also objected to Apple owning the trademark.

On Wednesday, Dec 3, Justice Yates ruled that Apple's appeal be dismissed and that it pay the court costs of the Registrar of Trade Marks.

While the ruling doesn't prevent Apple from continuing to use the term "app store", it means that Apple does not have the right in Australia to prevent others from using it.

"Apple has not established that, because of the extent to which it has used the [trade]mark before the filing date, it does distinguish the designated services as being Apple's services," Justice David Yates said. "It follows that APP STORE must be taken as not being capable of distinguishing the designated services as Apple's services. The application must, therefore, be rejected."

This decision in Australia is part of a global battle by Apple to own the "app store" trademark.

Mark Summerfield, a senior associate with Melbourne intellectual property law firm Watermark, estimated the appeal would have cost Apple between $100,000 and $200,000.

In simple terms, Summerfield said the judge ruled that consumers would have understood the term 'app store' to mean no more than an expression to describe a trade channel – i.e. a store – by or through which application software could be acquired.

Because of this Apple was therefore not able to register the term 'app store' as a trademark, he said. Despite this, a previous trademark registration by the tech giant of the term 'appstore' in Australia without a space remains in place, meaning it can restrict others from using it.

"The law requires that a trademark be capable of distinguishing the goods or services of one trader from those of another, so that consumers are not confused about who they are buying from," Summerfield said, according to SMH.

"For this reason, trademarks that are descriptive of the product or service in question, and which are therefore likely to be used legitimately by multiple traders, generally cannot be monopolized by registration."

Summerfield said the only significant exception to this rule was where the use of an otherwise descriptive term by one particular trader has been "so extensive as to create a specific association in the minds of consumers - think, for example, of Aussie Home Loans."