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By Murray Griffin
Dec. 4 — An Australian court Dec. 3 ruled that Apple was not entitled to register “App Store” as a trademark and rejected its arguments that it was inappropriate for the Registrar of Trade Marks to obtain evidence from lawyers acting for Microsoft.
Apple had filed an application in July 2008 to register the two words used together in any form or style, and appealed to the Federal Court after the Registrar rejected it.
But the Federal Court upheld the registrar's decision.
At the time Apple had filed its application, the word “app” already had a well-understood meaning as a shorthand term for “application software,” and the word “store” was not given new meaning by being used in conjunction with “app,” according to Justice David Yates.
“I am satisfied on the balance of probabilities that, at the filing date, members of the public seeking to acquire application software would have understood ‘app store' as no more than an expression to describe a trade channel—a store—by or through which application software could be acquired,” the court said.
Apple's competitors might have legitimately wanted to use the same two words in combination to signify a trade channel for application software, the court said.
The court said that Apple's statement that it had been the first to use the combination “app store” was doubtful, given that in 2006 an applicant other than Apple had registered “appstore,” a registration now held by Apple itself.
But even if it had been the first to use the expression, that would not justify its registration as a mark, the court said.
Nor was Apple's submission strengthened by the previous successful registration of “Appstore,” the court said, because “Appstore“ and “app store” are not the same and the prior registration might have been wrongful.
However, the court said, “It is an unwarranted distraction to investigate whether that is the case in the present matter.”
Jürgen Bebber, a trademark lawyer with Griffith Hack, Melbourne, Australia, told Bloomberg BNA on Dec. 4 that the decision was “not particularly surprising.”
It would have taken a lot of evidence “to convince the judge that the words ‘app store’ on their own without any reference to Apple would be understood by consumers as a reference to Apple,” Bebber said.
Bebber noted that even if Apple had been successful, it was not a given that they would have been able to exercise exclusive rights in the term.
If others were to use the term “app store” in a descriptive fashion rather than a trademark sense “then the infringement provisions would not apply,” he said.
Apple has the option to seek leave to appeal the matter to Australia's High Court, but Bebber said that it was unlikely that it would do so.
“I don't think that this will go the High Court, I don't think its worth anyone's while,” he said.
The court also rejected Apple's criticisms of the registrar's conduct in the appeal, although the company's complaints didn't form part of its case for registering the mark.
Apple argued that the registrar had played an overly active role in the proceeding by obtaining evidence that had not been considered at the time of the original decision.
Apple also complained that the registrar had obtained affidavit evidence from third parties, including solicitors acting for Microsoft Corp., which has opposed Apple's corresponding application for the registration of “app store” in the United States.
It also complained that the registrar had “taken a partisan role,” rather than simply providing assistance to the court on general questions of importance.
But the court said that the registrar had not acted in a partisan way, nor over-stepped its role in the hearing.
“I do not think that the Registrar should be criticized for advancing a case for the Court's consideration,” the court said. “To deny the Registrar that opportunity would be to deny the Court the opportunity to make findings on an appropriately-informed basis.”
Celia Poole, general manager for the trade marks and designs group of IP Australia, which administers Australia's IP rights system, told Bloomberg BNA by e-mail Dec. 4 that she agreed with the court's assessment that the registrar's approach had been appropriate.
Apple has successfully registered in Australia the expression “Available on the App Store” used in conjunction with a specified logo, and now owns the registration for “Appstore.”
The unsuccessful application to register “app store” was for specific services, and the company has submitted a separate application to the registrar to register the expression for certain goods.
To contact the reporter on this story: Murray Griffin in Melbourne at email@example.com
To contact the editor responsible for this story: Tom P. Taylor at firstname.lastname@example.org
The decision is available at http://www.austlii.edu.au/au/cases/cth/FCA/2014/1304.html.
Apple's trademark applications are available via http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start.
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