Apple Inc. v Registrar of Trade Marks (2014) 227 FCR 511
Property; intangible property; trade marks; what can be registered.
Facts: In 2008 Apple Inc. (Apple) applied to register the words App Store as a trade mark with respect to particular services. The application was first accepted, but then revoked by the Registrar because the trade mark did not distinguish Apple's goods or services. Under s 41 of the Trade Marks Act 1995 (Cth), the Registrar must reject a trade mark application if the mark is not capable of distinguishing the applicant's goods or services from others' goods and services.
Issue: Were the words 'App Store' capable of distinguishing Apple's goods and services from others' goods and services in the designated category at the time of the application for registration?
Decision: The words App Store were not capable of distinguishing Apple's goods and services from others' goods and services at the time of the application.
Reason: After considering a range of expert linguistic evidence, the court found that the words 'app' and 'store' were already known and used in the sense that Apple used them. In particular, the word "app" had a well-established meaning as a shorthand expression for computer software that is application software (as opposed to operating software). Likewise, the word "store" had a well-established meaning among traders and the general public that was not limited to a traditional physical store, but included online stores for the provision of goods or services. For instance, in preceding years, Amazon had opened a range of online stores for e-Books, Software Downloads and e-Documents, and Apple had opened its iTunes Music Store. Accordingly, when the application was made, 'App Store' would have been understood by traders and the general public as simply meaning a store where apps could be purchased. Although in later years the expression App Store came to be strongly associated with Apple's particular service, at the time of the registration application in 2008, these words carried only their ordinary meaning. The Registrar had been correct in rejecting the application.