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Apple denied 'App Store' trademark by Australian court

Selling software online? There's LOTS of app stores for that

Australia's Federal Court has decided Apple cannot trademark the term “App Store”.

Apple's been trying to own the term in Australia since 2008, but in 2013 the nation's Registrar of Trademarks ruled that App Store “ does not distinguish the applicant on its own.” In other words, App Store doesn't apply to Apple alone. The Registrar therefore rejected the application for an Australian trademark.

Apple wasn't happy about that and appealed. It'll now be grumpier still, because Justice Yates of Australia's Federal Court today upheld the previous decision.

Yates' conclusion follows:

Apple has not established that, because of the extent to which it has used the mark before the filing date, it does distinguish the designated services as being Apple’s services. It follows that APP STORE must be taken as not being capable of distinguishing the designated services as Apple’s services.

The judge's logic is interesting, because he goes through some previous trademark disputes in which litigants made strong arguments about how a logo's colour or terms they used imparted “distinctive character” to their trademarks. Apple, Yates suggests, didn't quite have that strong association.

“... it would have been rational for members of the public seeking apps for their Apple products to think that there was an association between Apple and the App Store referred to for acquiring those apps,” the judgement says. “But that is quite a different thing from those members of the public attributing trade mark signification to the words 'app store' themselves.”

Apple's counter-arguments included pointing out that it detected “an enormous spike” in the use of “app store” as a search term “immediately following the launch of Apple’s App Store service.” That spike, Apple argued, “showed why other traders would want to benefit from the interest in that service by adopting the same name.”

Apple also pointed out that its rivals gave their app stores names that distinguished themselves from its own. Microsoft, for example, used “Windows Phone Store” while BlackBerry offered a “World” of apps.

Another interesting nugget in the judgement concerns Microsoft, as “some of the evidence obtained by the Registrar came from the solicitors acting for Microsoft Corporation in Australia, in circumstances where Microsoft Corporation has opposed Apple’s corresponding application for the registration of APP STORE as a trade mark in the United States of America.”

Those efforts were futile: Apple's US trademark for App Store can be found here.

Apple may yet appeal the decision, although the jurisdiction of Australia's ultimate appellate court is largely constitutional and the tribunal not compelled to consider all cases.

Not being able to use App Store as a trademark doesn't seem to be hurting Apple Australia, which recorded around AUD$6bn of revenue in Australia in its most recent filings. And paid about one per cent tax. ®

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