KEY ISSUE
Trade marks which lack distinctiveness and have not acquired distinctiveness through use
FACTS
A launched its App Store in Australia on 11 July 2008.
One week later, it applied to register APP STORE as a trade mark for retail store services featuring computer software in class 35 and in classes 38 and 42, TM App No 1252301. Note: A has an existing registration for APPSTORE in classes 35 and 42 accepted in 2006 without adverse report by the Trade Marks Office.
The Registrar rejected the application on the grounds that it had no inherent capacity to distinguish and A had made insufficient use of the mark before the application was filed to establish any reputation in the mark.
A appealed to the Federal Court arguing that while "app" was understood as an abbreviation for "application", that understanding was limited to more technical people and the meaning of "store" was understood as a physical store, not a virtual online market.
COURT DECISION AND REASONING
The Registrar correctly rejected the application on the grounds that it lacked distinctiveness.
Distinctiveness is assessed as at the application date not the earlier claimed Convention priority date (7 March 2008) [this finding could be important in some cases but was not determinative here].
A's contentions about the general understanding of "app" and "store" were not supported by the evidence including various prior publications referred to "apps" and even A's own iTunes store established in 2003.
Apple's Newspoll survey was discounted firstly because it was conducted in 2011 (3 years after the application) and secondly because all it did was show an association between A and the phrase rather than people identifying the phrase as a badge of origin with A as the source.
It followed that members of the public would have understood an app store as a place to buy software online rather than something unique to A – there was no inherent capacity to distinguish and the words bore no more than their ordinary signification as used by A.
A's evidence of acquired distinctiveness was insufficient (perhaps not surprising given the use began only 1 week before the application date).
KEY LESSONS
Marks consisting of ordinary English words including abbreviations are difficult to register where they are essentially descriptive of the relevant goods or services. Substantial evidence that the public identifies the words with the applicant as a source or badge of origin is required. Mere association is insufficient.
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