Apple Inc

[2018] ATMO 36

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

ReTrade Mark application numbers 1666271 (35), 1666272 (38), 1666274 (42), 1693917 (9) – APP STORE – each in the name of Apple Inc

DELEGATE:  Nicholas Smith

REPRESENTATION:                 Applicant:  Christian  Dimitriadis  of  Counsel  instructed  by  Baker  & McKenzie

DECISION:  2018 ATMO 36

Request to be heard under section 33(4) of the Trade Marks Act 1995 in relation to a ground for rejection under section 41 of the Act –section 41(3) evidence of use demonstrated - trade marks to be accepted for possible registration

Background

1. On 23 December 2014, Apple Inc. (‘Applicant’) applied to register three trade marks under the Trade Marks Act 1995 (‘Act’). The current details of those trade mark application are set out below. On 15 May 2015 the Applicant lodged a divisional application for the fourth trade mark listed below in respect of some of the goods of trade mark application 1556965, with a priority date of 28 March 2011.

   Application Number:         1666271

Filing Date:  23 December 2014

Services:Class 35: online retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; online retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics

Trade Mark:  APP STORE  (‘Trade Mark’)

Application Number:         1666272

Filing Date:  23 December 2014

Services:Class 38: Electronic transmission of computer software via the Internet and other computer and electronic communication networks

Trade Mark:  APP STORE  (‘Trade Mark’)

Application Number:         1666274

Filing Date:  23 December 2014

Services:Class 42: Maintenance, repair and updating of computer software; providing (hosting) a website featuring technical information relating to computer software; providing technical information relating to computer software via a website; providing consulting services and technical troubleshooting support for computer software; providing search engines for obtaining data via communications networks; providing temporary use of non-downloadable computer software and online facilities to enable users to access and download computer software; Internet services, namely, creating indexes of information, sites and other resources available on global computer networks for others; searching, browsing and retrieving information, sites, and other resources available on global computer networks and other communication networks for others

Trade Mark:  APP STORE  (‘Trade Mark’)

Application Number:         16693917

Filing Date:  15 May 2015

Priority Date  28 March 20111

Goods:Class 9: computer software; computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, audio files, video files, electronic games,

1 As discussed below, the priority date of Trade Mark 16693917 is now 15 May 2015.

and electronic publications; computer application software for mobile phones, portable media players, and handheld computers; computer software for use in searching, reviewing, purchasing, and downloading electronic games and software applications; data synchronization software; computer application development software; computer programs for personal information management; database management software; mobile telephone software; computer programs for accessing, browsing and searching online databases; none of the foregoing being computer operating system software

Trade Mark:  APP STORE  (‘Trade Mark’)

1. In the interests of clarity when reading this decision, when I refer to the Trade Mark, I am referring to the APP STORE Mark and/or the Applications collectively. When I am referring to the marks or applications individually I will use their application number and when I am referring to the particular goods or services I will refer to them by their class (i.e. the ‘Class 35 Services’). When I refer to ‘Goods and Services’ I am collectively referring to the goods and services for which each of the four marks listed above are sought to be registered.

1. The Applicant, in its submissions has provided a useful summary of the goods and services for each of the Trade Marks, being:

   ·Application number 1693917 is for goods in Class 9, being certain kinds of

   computer software;

   ·Application number 1666271 is for services in Class 35, being certain kinds of

   online retail store services featuring computer software;

   ·Application number 1666272 is for services in Class 38, being electronic transmission of computer software via the Internet and other networks; and,

   ·Application number 1666274 is for services in Class 42, being certain kinds of maintenance of support services in respect of computer software and services relating to the provision of information via the Internet or other networks.

1. Each Trade Mark was duly examined under section 31 of the Act and a ground for rejection was identified by the examiner under section 41 of the Act2. The examiner stated (paraphrased) that the Trade Mark consists of the words APP STORE which indicate that the goods/services are provided by a facility or store which provides computer applications (apps). Other traders should be able to use the words APP STORE in connection with similar goods or services. In the examination report for

   16693917, the examiner additionally noted that ‘The Macquarie Dictionary defines APP as an application program; STORE is relevantly defined as a shop, or a supply or stock of something. Thus, an APP STORE is a store, electronic or otherwise, which provides application programs.’

1. The Applicant subsequently provided submissions arguing that the Trade Mark was capable of distinguishing its goods/services from those of other traders. In addition, it supplied two statutory declarations in evidence being:

·     Declaration of Robert Anthony Arnold, Partner at Baker McKenzie, made on 7 September 2017 with Annexure RAA-1 and RAA-2 (‘Arnold Declaration’) Annexure RAA-1 consisted of a copy of an affidavit of John Davis sworn 28 June 2013 with annexures JD-1 to JD-10 (‘Davis Affidavit’) which was filed in Apple Inc. v Registrar of Trade Marks3 (‘App Store Case’) , a proceeding in the Federal

Court relating an earlier application made by the Applicant to register the trade mark application number 1252301; and

·     Declaration of Thomas R La Perle, Assistant Secretary and Director in the Applicant’s legal department, managing the Applicant’s Trademark and Copyright Group, made on 6 September 2017 with Annexures TRL-01 to TRL-78 (‘La Perle 1’).

1. The Examiner was not convinced by the evidence and submissions of the Applicant and issued second examination reports setting out detailed reasons for maintaining the ground for rejection under section 41.

1. The Applicant requested a hearing on the ground for rejection under section 41 of the Act and the hearing was set down for 7 February 2018 in Sydney. The matter was allocated to me to decide as a delegate of the Registrar of Trade Marks and I issued

2 I note that in respect of Trade Mark 16693917 the ground of rejection was identified under section 41 of the Act as it was prior to the amendments to s 41 introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012

3 [2014] FCA 1304.

directions allowing the Applicant an opportunity to file written submissions. The Applicant filed written submissions on 30 January 2018. At the hearing on  7 February 2018 Christian Dimitriadis of Counsel instructed by Baker & McKenzie, representing the Applicant, made further oral submissions.

1. During the hearing I raised a factual issue not dealt with in the Applicant’s submissions or evidence, namely the existence of a software retail and download service operating under the name ‘Amazon Appstore’. Following discussion with Mr Dimitriadis, I issued a further direction providing the Applicant with an additional week to file further evidence and submissions on that point. On 14 February 2018 the Applicant filed further written submissions and two additional declarations being:

·     Declaration of Thomas R La Perle made on 13 February 2018 with Annexures TRL-01 to TRL-78 (‘La Perle 2).); and

·     Declaration of Glenn A. Gundersen, Partner at Dechert LLP, made on 13 February 2018 with Annexures GAG-1 to GAG-2 (‘Gundersen Declaration’).); and

Legislative framework

1. Since the application to register nos. 1666271, 1666272 and 1666274 was made after the amendments to s 41 introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 came into effect on 15 April 2013 it is s 41 as it is presently constituted which is relevant in this case. As I have said, the priority date of these applications is 23 December 2014.

1. Trade Mark 1693917 was filed as a divisional application under s 45 of the Act (the parent being 1556965, and therefore has a priority date of 28 March 2011. However in its submissions the Applicant indicated that it sought, pursuant to s 65(7) of the Act, to amend its application to delete the particulars of its divisional status. The effect of this is that the application would have a filing and priority date of 15 May 2015, after the amendments to s 41 came into effect.

1. During the oral hearing I indicated that such an application should be made in writing and filed directly with IP Australia. This occurred on 15 February 2018 and the amendment was made on 28 February 2018. For the purpose of this decision Trade Mark 1693917 has a filing and priority date of 15 May 2015.

1. Section 41 of the Act relevantly provides:

41 – Trade Mark not distinguishing applicant’s goods or services

(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:     For goods of a person and services of a person see section 6.

(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

1. With respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:

   Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks4 (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:

   The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

   The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):

4 (1998) 40 IPR 498, 505.

Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered.  Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.

Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:

Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:

(a)  that the [Trade Mark] is inherently adapted to distinguish the [Goods and Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Goods and Services]; [that is, neither s 41(3) nor s 41(4) applies] or

(b)  that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Goods and Services] from the goods or services of other persons; [that is, s 41(3) applies] or

(c)  that the [Trade Mark] is to some extent inherently adapted to distinguish the [Goods and Services] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Goods and Services]. [that is, s 41(4) applies]5

Is the Trade Mark to any extent inherently adapted to distinguish the Goods and Services from the goods or services of other persons?

1. It is not necessary to consider in any great detail whether or not the Trade Mark is inherently adapted to distinguish. The Applicant accepts, for the purposes of its submissions, the Examiner’s characterization of the Trade Mark as ‘not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons’ within the meaning of s 41(3)(a). I agree with this conclusion.   I consider that the ordinary signification of the Trade Mark is a store,

   electronic or otherwise,  which provides application programs6  or a trade channel

   through  which  application  software  could  be  acquired7.     Given  this  ordinary signification, I find that traders might legitimately need to use the Trade Mark in

5 [2017] ATMO 25, [38]-[40].

6 The description of the ordinary signification of the Trade Mark provided in the Exam Report.

7 The description of the ordinary signification of the Trade Mark provided in App Store Case, [203].

respect of the Goods and Services for its ordinary meaning. In this decision I describe the Goods and Services offered by the Applicant’s APP STORE (as well as its competitors, such as Google Play) as ‘software retail and download services’.

Did the Trade Mark in fact distinguish the Goods and Services?

Legal principles

1. As the Trade Mark is not to any extent inherently adapted to distinguish the Goods and Services, the Trade Marks must be rejected unless the evidence before me establishes that the Applicant has used the Trade Mark before the priority dates to such an extent that the Trade Mark does in fact distinguish the Goods and Services as being those of the Applicant. To establish that a sign which is not to any extent inherently adapted to distinguish does in fact distinguish typically requires evidence of extensive widespread use and exposure to the Australian public of that Trade Mark over a long period of time and this use must have occurred before the priority date(s).

1. Use as a trade mark is:

   [U]se of the mark as a ‘badge of origin’ in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods.8

1. The Applicant’s evidence as to its use of the Trade Mark is indeed extensive. However as the Delegate in Mount Everest Mineral Water Ltd observed:

   It is convenient first to dispose of a myth: that is, given sufficient use, any sign might qualify as a trade mark and be registrable under the provisions of subsection 41(6). This is not true as is stated in Unilever Australia Ltd v Societé des Produits Nestlé SA [2006] FCA 782; 154 FCR 165; 69 IPR 255 (‘Go On ..’); implied in Yarra Valley

   Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297; (2010)

   90 IPR 117 (‘PERSIAN FETTA’); and discussed in British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (TREAT’), where Jacob J said:

   There is an unspoken and illogical assumption that ‘use equals distinctiveness’. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word ‘Soap’ as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark. Again, a manufacturer may coin a new word for a new product and be able to show massive use by him and him alone of that word for the product. Nonetheless the word is apt to be the name of the product, not a trade mark. Examples from old well-known cases of this sort of thing abound. The Shredded Wheat saga is a good example: the Canadian case is The Canadian Shredded Wheat Co Ltd v Kellogg Co of Canada Ltd (1938) 55 RPC 125 in the Privy Council and the

8 Coca-Cola v All-Fect Distributors Ltd [1999] FCA 1721 [19].

United Kingdom case The Shredded Wheat Co Ltd v Kellogg Co of Great Britain Ltd (1940) 57 RPC 137 in the House of Lords.

A moment’s reflection reveals that a trader’s repeated use of an inherently unadapted sign for the sake only of its ordinary meaning serves solely to reinforce its ordinary meaning in the eyes of the public. The word ‘soap’, used on ‘soaps’, is only descriptive and when used solely to describe the nature of the goods can never change its meaning. Such a sign is incapable of taking on an additional meaning as indicating only the goods of one trader. But that is not to state that a sign which lacks any inherent adaption to distinguish cannot take on another meaning as a trade mark and denote the goods or services of a trader. The acquisition of this other meaning depends entirely on a number of factors including:

·     whether the sign is, effectively, the only ‘normal’ way to describe or identify the goods or services in question such that other traders are likely to require in good faith to want or need to use it, and,

·     whether the sign is the only, or the most appropriate, sign to use to denote the nature or origin of the goods.

·     The way the sign has been used by the owner;

·     whether the sign is used by other traders for the sake of its ordinary meaning;

·     how the particular market has been educated concerning that use; and,

·     how the market perceives that sign in denoting the goods in respect of which it is used: see Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50; (1998) 40 IPR 498; [1998] AIPC 37,241; (‘OREGON’) Philmac Pty Ltd v Registrar of Trade Marks [2002] FCA 1551; (2002) 126 FCR 525; (2002) 56 IPR 452; [2003] AIPC 91-841 (‘Terracotta Colour’).9

1. In Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks Yates J summarized the issue in these terms (in respect of s41(6) of s41 as it stood prior to the Raising the Bar legislation, which is equivalent to the current s41(3):

   Section 41(6) recognises that a sign may be descriptive but still distinctive. In Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297, Middleton J observed (at [60]) that the categories of descriptive words, on the one hand, and words that are capable of distinguishing goods and services, on the other, are not mutually exclusive. His Honour quoted the following observations of Lockhart J in Johnson & Johnson Australia Pty Limited v Sterling Pharmaceuticals Pty Limited (1991) 30 FCR 326 at 335-336:

   The mere fact that a word is descriptive or has a descriptive flavour does not necessarily prevent it being distinctive of somebody’s goods: see Re application of H N Brock & Co Ltd, for a trade mark (“Osowoolo”) and trade marks (“Orlwoola”) (1909) 26 RPC 683, 850, 854 (the Orlwoola case) and Re application of Joseph Crosfield & Sons Ltd to register a trade mark (“Perfection”) (1909) 26 RPC 837 (the Perfection case).

If a word is prima facie descriptive the difficulty of establishing that it is distinctive of the plaintiff’s goods is considerably increased. Also, if the

9 2012 ATMO 65, [16]-[17].

plaintiff has not used the word simply for the purpose of distinguishing his own goods from those of others but primarily for the purpose of describing the particular kind of article to which he has applied it and only secondarily, if at all, for the purpose of distinguishing his own goods, it will be more difficult for him to establish that it is distinctive of them.

A word may be so totally descriptive of the goods concerned as to be unregistrable, for example, ELECTRICS for electrical apparatus: see Electrix Ltd’s application for the registration of trade marks [1959] RPC 283 at 288. In less extreme cases the question is one of degree. There must be a sufficient degree of distinctiveness to counterbalance the descriptive character of the word: see Re application by J & P Coates Ltd for registration of a trade mark (1936) 53 RPC 355 at 368 and Yorkshire Copper Works Ltd v Registrar of Trade Marks [1954] 1 WLR 554; [1954] 1 All ER 570. A word which is prima facie descriptive may become distinctive in connection with particular goods and yet retain its descriptive meaning: see Burberrys v J C Cording & Co Ltd (1909) 26 RPC 693 at 704, per Parker J and the Perfection case (supra) (at 857-858). But the word must, in order to become distinctive, have a new and secondary meaning different from its primary descriptive one and thus cease to be purely descriptive: see Reddaway v Banham [1896] AC 199 at 213, per Lord Herschell.

Distinctive means distinctive in the sense that the mark distinguishes the registered proprietor’s goods from others of the same type in that market, though it does not mean that the goods must specifically identify the plaintiff as the source of those goods. Often the [identity] of the supplier will be unknown, but what is important is that a significant number of consumers in the relevant market identify the plaintiff’s goods as coming from one trade source: see S Ricketson, par 25.8.10

1. Most recently, in Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 the court made the following comments:

   An essential characteristic of a trade mark is that it is used to distinguish the goods or services of a trader from the goods or services of other traders: s 17 of the TMA; E & J Gallo Winery v Lion Nathan Pty Ltd (2010) 241 CLR 144 at [42]. A trade mark may in fact distinguish goods and services, or it may not. If a trade mark is not capable of distinguishing designated goods or services, then it may be used but cannot be registered. If it is not registered, the owner does not acquire the monopoly on the use of the trade mark conferred under s 20 of the TMA.11

   …

   As Yates J observed in Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756 at [34], mere evidence of use of a sign does not establish its distinctiveness for trade mark purposes. Whether the appellant used the word mark to distinguish the Services, and the extent to which it achieved distinctiveness, involved an evaluative judgment. The primary judge found that the appellant had used the word mark to distinguish its operation of its medical centres, but had not used the mark to distinguish the Services.12

10 [2015] FCA 756; (2015) 114 IPR 81, [128].

11 [2017] FCAFC 174, [219].

12 Ibid [373].

1. The App Store Case involved the question of whether to accept for possible registration the expression APP STORE as a trade mark for a similar but broader range of services then the present applications. The Applicant notes the finding made in that case that the Trade Mark is not to any extent inherently adapted to distinguish those services at its filing date but distinguishes the App Store Case from the present Applications. The Trade Mark had been used in Australia for 8 days when the application considered in the App Store Case was made, while at the priority dates of the present Applications the Trade Mark had been used in Australia, at least in respect of a subset of the Goods and Services for over 6 years. Unlike in the App Store Case, the Applicant is able to provide extensive evidence of use of the Trade Mark prior to the relevant priority dates. The key point is whether the demonstrated evidence of use, is use as a badge of origin indicating a connection in the course of trade between the goods/services and the Applicant. The comments in the App Store Case on how to evaluate evidence of use of a mark are relevant and are extracted below.

   The insufficiency of such evidence to show that a sign functions as a trade mark has been the subject of discussion in the cases. For example, in Chocolaterie Guylian, Sundberg J considered whether, by reference to survey evidence, the shape of a chocolate functioned as a trade mark. His Honour (at [95]) said:

95.     … The survey evidence here plainly shows an association between the seahorse shape and Guylian. This is no doubt due in large part to the substantial sales of Guylian’s sea shell chocolates with the seahorse shape over a considerable period of time. However, even assuming that the association in this case is strong enough, the anterior question is whether the association is referable to Guylian having used the shape as a trade mark. In other words, is the fact that a relatively large proportion of consumers may think of Guylian when they see the shape a consequence of Guylian having educated the public to recognise it as a badge of origin. When the evidence of use is considered as a whole, I am not satisfied that Guylian has done so …

In Societe Des Produits Nestle SA v Unilever plc [2003] RPC 35, Jacob J, when also dealing with whether a particular shape functioned as a trade mark, was critical of survey evidence that showed no more than that the sign in question had an association

– even a high degree of association – with the trade mark applicant. At 662, his Lordship said:

There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone.  Now he is in a position to stop other parties,

using their own word trade marks, from selling the product, even though no- one is deceived or misled.

His Lordship continued:

… it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.

In Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97, the Full Court considered whether it had been established for the purposes of s 41(6) of the Act that a particular shade of green should be taken as having the capacity to distinguish. Survey evidence established that 85% of respondents identified BP when shown a picture of a service station coloured green. Expert evidence was given that this showed a “strong association” between BP and the colour green. The Full Court (at [117]) remarked:

Dr Bednall concluded that there was a strong association between green and BP. This conclusion is hardly surprising. Green had been one of BP’s company colours since at least 1956. After 1989 it had been used as the predominant colour with yellow. In particular, in circumstances where there were only a few oil companies, where all have used colour historically to distinguish themselves, where BP has been the only company before 1995 to use green in that way, it is hardly surprising that people shown this stimulus would associate the green service station with BP service stations which have been coloured with a predominant green and accompanying yellow. That association does not lead to the conclusion that the use of colour from 1989 has included use, as a trade mark, of either green alone, or green as the predominant colour accompanied by any other colour. The mere fact that consumers associate green with BP does not, in our view, satisfy the test of distinctiveness required by s 41(6). Evidence of promotion and use does not, without more, demonstrate distinctiveness: see Blount v Registrar of Trade Marks at 61G, citing with approval Jacobs J in British Sugar plc v James Robertson & Sons Ltd at 286 and 302; and Koninklijbe Philips Electronics NV v Remington Products Australia Pty Ltd at [13]. It is necessary for BP to establish that the association is referable to the use of the mark as a trade mark. The learned authors of Kerly’s Law of Trade Marks and Trade Names (Kitchin D, Llewelyn D, Mellor J, Meade R, Moody-Stuart T, Keeling D, Jacob R Kerly’s Law of Trade Marks and Trade Names (14th ed, Sweet Maxwell, 2005) at [8-025]) state, albeit in the European context, that to establish distinctiveness through use the proprietor must have  done something in its use to identify the sign as being a trade mark; the use of a sign, without more, does not necessarily create the perception that the products originate from a particular trade source: cf Societe des Produits Nestle SA v Unilever plc [2003] RPC 35 at [31].13

1. I note that some of the evidence filed by the Applicant consists of the use of the Trade Mark in the presence of other marks owned by the Applicant, including the Apple

13 App Store Case, [225]-[228].

icon, being the outline of an apple with a small bite taken out of it. However, the presence of multiple indicia appearing concurrently on a label is not fatal to establishing the distinctiveness of a trade mark. The question is ultimately whether the evidence demonstrates that the Trade Mark is acting, in its own right, as a badge of origin notwithstanding the presence of other indicia. This requires consideration from an objective viewpoint of the purpose and context of the use including:

Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a label of a clear and dominant brand. 14

1. In summary when evaluating the evidence of the Applicant for the purposes of s41(3)(b), I must consider whether it establishes that the Trade Mark has a new and secondary meaning different from its primary descriptive one and thus, at the priority dates, had ceased to be purely descriptive. Another way to look at it is whether consumers regard the Trade Mark alone as a badge of trade origin in the sense that they would rely upon that Trade Mark alone as an indication of trade origin for the Goods and Services. In particular I must look at:

   ·the way APP STORE  has been used by the Applicant;

   ·how the particular market has been educated concerning that use;

   ·how the market perceives APP STORE  in denoting the services in respect of which it is used; and

   ·that the APP STORE Mark is used to distinguish the Goods and Services, and not to distinguish any other goods and services offered by the Applicant.

Summary and evaluation of the Applicant’s evidence

1. The evidence submitted by the Applicant is several thousand pages, and hence this decision contains the barest summary and evaluation of the evidence of the Applicant. To the extent that the paragraphs below reach conclusions as to whether the Trade Mark is used as a trade mark, they are my conclusions reached following an evaluation of the evidence.

1. The key points arising out of La Perle 1 are:

   ·The Applicant designs, manufactures and markets mobile communication and media devices, personal computers, digital media players and sells a variety of

14 Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 425.

related software, services and accessories.  The Applicant’s products include the iPhone, iPad and iPod.

·     Sales of the iPhone and iPad products in Australia are very significant, with a considerable portion of the Australian population, if not a majority, being the owner of or having access to an iPhone or iPad at the priority dates.  At various points prior to the priority dates the iPhone has had approximately a one third market share of the Australian mobile phone market while the iPad’s market share of the Australian tablet market being around 75%. This market share has obviously varied over time but given the ubiquity of smart phones and common availability of tablet PCs (as of 2013 over 5 million Australians owned a tablet PC) this share is highly significant.

·     In 2008 the Applicant launched its software retail and download service under the Trade Mark. This service provided a means of directly delivering software products (many of which were created by third parties) to users of the Applicant’s iOS mobile operating system, which has included iPhones and iPod touch users and since 2010, when the product was launched, iPad users.

·     The APP STORE is the name of the distribution centre for software developed by the Applicant and by third parties.  The Applicant offers software development kits to third party developers through which they can create software to be distributed on the APP STORE to owners of devices running the iOS operating system.  This service is offered to developers under or by reference to the Trade Mark; notably the Applicant’s software retail and download service is generally described in the Applicant’s communications as the ‘App Store’ and not the ‘Apple App Store’ or the ‘App Store for iPhone’.

·     The APP STORE was launched on 11 July 2008 and was available immediately from devices running the iOS mobile operating system and the Applicant’s iTunes software for Mac and Windows-based computers.  Every user of a device running the iOS mobile operating system has APP STORE software pre-loaded onto their device with the product displaying the Trade Mark.  In order to download software for their iPhones, iPod Touches and iPads, users of these products have to use the APP STORE.

·     By 7 July 2011 there were 200 million global users of the APP STORE who had made 15 billion downloads15.  In Australia the APP STORE offered 425,000 software programs, rising to 1 million available software programs by the priority dates.  The number of downloads from the APP STORE increased to 50 billion by May 2013 and in December 2013 there were nearly 3 billion

downloads in that month alone. The number of downloads from the APP STORE in Australia prior to the priority dates was very significant, exceeding the population of Australia by many multiples each year since 2010.

·     The Trade Mark is used by the Applicant to identify its software retail and distribution services:

o   On devices, including the iPhone and iPad, where it has been pre- loaded.  The product is referred to as APP STORE below an icon which historically has depicted a pencil, ruler and paintbrush (‘App Store Icon’);

15 I note that only use in Australia is relevant for the purposes of s41(3)(b) however these statistics show the scale of use of the Trade Mark prior to the priority dates.

o   On the Applicant’s iTunes software where it is referred to as APP STORE;

o   Since 2011, on Apple Mac computers, referred to as App Store above the App Store Icon; and

o   On APP STORE Gift Cards where the product is referred to as App Store, next to the Apple Icon.  The number of sales of the APP STORE Gift Cards was very significant in 2009 and 2010, but less significant thereafter.

·     The Applicant has marketed the APP STORE software retail and distribution service in Australia through print, television and Internet advertising. The Applicant’s approximate advertising expenditure in Australia for iPhone, iPod and iPad products that feature the Trade Mark between 2008 and 2014 is considerable.  In addition the Applicant has advertised its software retail and distribution service under the Trade Mark on its own websites (which receive a very high number of daily unique users) and through various e-mail campaigns.

·     I have reviewed samples of television and print advertising annexed to La Perle 1. Much of the advertising features other marks owned by the Applicant, such as the Apple Icon and iPhone, however when considering the context of the use, I consider that the Trade Mark is acting, in its own right, as a badge of origin notwithstanding the presence of the other marks.  An example of this is a television advertisement for the iPad, which includes the tag line ‘content from iTunes, apps from App Store’.  In this advertisement the iPad mark is acting as a source identifier for the Applicant’s tablet PC, iTunes acts as a source identifier for the Applicant’s media retail and download service and App Store acts as a source identifier for the Applicant’s software

retail and download service.  In other advertisements annexed to La Perle 1 the Applicant’s software retail download service is referred to as ‘the App Store’ or ‘App Store’ and not as the ‘Apple app store’ ‘its app store’, ‘our app store’. While I do not necessarily place great import on the Applicant’s capitalisation of App Store, what is relevant is that the Applicant uses the Trade Mark to refer to its service offerings without the need to append another mark on it to identify the software retail and download service as being the Applicant’s service.

·     The Applicant has a number of competitors offering software retail and distribution services, who use different terms to describe and brand their services with no relation to the Trade Mark.  In particular Microsoft’s software retail and distribution services have been referred to as the Windows Mobile Marketplace, Windows Phone Marketplace and Windows Phone Store. Google has offered its software retail and distribution service as Android Marketplace and later Google Play.

·     Much of the media annexed to La Perle 1 uses the term ‘App Store’ to refer to the Applicant’s software retail and distribution service without the need to identify it as the Applicant’s.  The APP STORE is frequently referred to in contrast to Google’s offering, being Android Marketplace or Google Play. Examples of the manner in which the Trade Mark is used include ‘visit the App Store or Android Market via your phone and search for…’ and ‘You can download Instagram for free from the App Store and on Google Play’.

1. The key points arising out of the Arnold Declaration are:

   ·Annexure RAA-1 consists of the Davis Affidavit. John Davis was a Group Account Director at NewsPoll Market and Social Research and was an expert witness in the App Store Case.  This affidavit included information from a survey conducted by NewsPoll on 6-9 October 2011 and from the results of the survey Mr. Davis reached the conclusion that:

   o79% of respondents had heard of the term ‘APP STORE’;

   o65% of respondents associated ‘APP STORE’ with a particular company or brand; and

   oOf the 65% of respondents referred to above, 88% associated ‘APP STORE’ with the Applicant or one or more of its’ brands and did not mention any other brands.

   ·Annexure RAA-2 is a collection of printouts of extracts from the Wayback Machine showing use of the Trade Mark as identifying the Applicant’s software retail and download service by third party developers and external media.

   ·The evidence in RAA-2 is that when app developers (or media promoting a particular app) wish to identify the software retail and download service that their app is available on they use the Trade Mark to identify the Applicant’s software download service.  Companies including Spotify, ABC IView, Shazam, the Sydney Morning Herald, Tinder, Tripview, Uber and Google Maps generally indicate that their app can be downloaded from the Applicant’s software retail and download service by using phrases such as ‘Free on the App Store’, ‘download on the App Store’ and ‘available on the App Store’.  Such phrases generally (but not universally) do not contain any other marks that could be used to identify the source of the software retail and download service as that of the Applicant and hence are use of the Trade Mark as a trade mark (or use as both a trade mark and for a descriptive purpose).

   ·RAA-2 also contains evidence as to how third party software providers characterise competing software retail and download services. The examples in RAA-2 do not refer to competing services as ‘app stores’.  Rather they are referred to by their own unique brand names.  For example, on the Transport for NSW website the TripView app is stated as being available from

   othe App Store;

   oGoogle Play;

   oBlackberry World; or

   oWindows Phone Store

   The use of ‘App Store’ in that context is clearly use as a trade mark in that it identifies the software retail and download service operated by the Applicant without reference to any other identifying marks.  Furthermore it illustrates that third parties have an understanding that consumers recognize the Trade Mark as denoting the software retail and download service operated by the Applicant and that other traders use other marks to identify their software retail and download services.

1. La Perle 2 and the Gundersen Declaration deal solely with the issue of the Amazon Appstore, which was discussed during the oral hearing. The key points arising out of these declarations are :

   ·Amazon.com Inc.(‘Amazon’) launched the Amazon Appstore in March 2011, 3 years after the launch of the APP STORE.  This lead to a dispute between the parties which was resolved confidentially in 2013.

   ·Amazon has never used the term ‘App Store’ (as opposed to Appstore).

   ·Amazon has never sought to register ‘App Store’ or ‘Appstore’ as a trade mark nor does it currently have any opposition, cancellation or other

   proceedings against any trade mark applications or registrations filed or owned by the Applicant in any jurisdiction for the Trade Mark.

Consideration

1. Following my consideration of the Applicant’s evidence and submissions I conclude that:

   ·The term APP STORE, while not to any extent inherently adapted to distinguish the Goods and Services, is not in the nature of a term such as ‘Soap’ (for soap)  where no amount of use could possibly result in the term becoming distinctive;

   ·The evidence in paragraph 147 of La Perle 1 is that each of the Applicant’s competitors have used different trade marks to identify their software retail and download services, including ‘Google Play’, ‘Windows Phone Store’ and ‘Blackberry App World’.  They do not and have not used the Trade Mark for the sake of its ordinary meaning.  I will deal with the issue of the Amazon Appstore later in this decision.

   ·On the evidence before me the Trade Mark has been used by the Applicant as a Trade Mark, being a distinctive identifier of the Applicant’s software retail and download service.  The term APP STORE has often been used by itself, without another mark or identifier to identify that the services offered under the Trade Mark are those of the Applicant.  To the extent that it has been used (especially in advertising) in combination with other marks owned by the Applicant, those marks are generally used to identify other goods and services offered by the Applicant; i.e. ‘content from iTunes, apps from App Store’. Furthermore the level of use of the Trade Mark in Australia at the priority dates was extremely high, with millions of Australian consumers being exposed to and regularly using the Applicant’s software distribution service identified by the Trade Mark.

1. I note the use by Amazon of the word ‘Appstore’ to describe its software retail and download service. I accept the Applicant’s submissions that Amazon’s use is primarily relevant to the question of whether the Trade Mark is to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons being the test in  ss  41(3)(a) or  41(4).    The Applicant

concedes that the test in s41(3) should apply in this case. The inquiry in the present proceeding is whether s 41(3)(b) of the Act is satisfied. The fact that Amazon has used the term ‘Appstore’ for the sake of its ordinary meaning is a relevant consideration but not a determinative one.

1. On balance, I am persuaded by the evidence before me that, as a result of the very extensive use of the Trade Mark over a 6 year period, at the priority date consumers regarded the Trade Mark alone as a badge of trade origin in the sense that they would rely upon that Trade Mark alone as an indication of trade origin for the Goods and Services. Crucial to this conclusion is evidence of how the Trade Mark is referred to by third parties, including the media and software developers that wish to advertise their products as being available for download on the Applicant’s software retail and distribution service. If consumers did not regard the Trade Mark alone as a badge of trade origin and saw the term ‘App Store’ as a descriptive term, the demonstrated use would make no sense and cause considerable confusion. The fact that third parties commonly use ‘App Store’ without any additional identification to indicate the name of the Applicant’s software retail and download service shows that, at the priority date, the Trade Mark has become distinctive.

1. The evidence of use of the Trade Mark for the Class 35 and Class 38 Services is extensive and I find that s 41 does not apply in respect of those services (and hence there is no ground for rejection). However, the evidence of use in respect of Class 9 Goods and Class 42 Services is insufficient to overcome the ground for rejection under section 41(3). I accept that the Trade Mark has been used in respect of a subset of Class 9 Goods, being ‘computer software for use in searching, reviewing, purchasing and downloading electronic games and software applications; none of the forgoing being computer operating systems software’ and a subset of the Class 42 services, namely ‘providing temporary use of non-downloadable computer software and online facilities to enable users to access and download computer software’ and that the use, is sufficient to satisfy s 41(3)(b) of the Act. I am not persuaded that the Applicant has shown any use of the Trade Mark for the remaining Class 9 Goods and Class 42 Services and in the absence of any such use s41(3)(b) applies in respect of the remaining Class 9 Goods and Class 42 Services.

Decision

1. Section 33 of the Act relevantly provides:

33 Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)    the application has not been made in accordance with this Act; or

(b)    there are grounds under this Act for rejecting it.

(2)The Registrar may accept the application subject to conditions or limitations.

(3)If the Registrar is satisfied that:

(a)    the application has not been made in accordance with this Act; or

(b)    there are grounds under this Act for rejecting it; the Registrar must reject the application.

1. I accept Applications 1666271 and 1666272 for possible registration with the endorsement ‘Evidence provided under subsection 41(3)’.

1. The Applicant has been provided with the opportunity to amend the Class 9 Goods and Class 42 Services to remove the goods and services for which I have been provided with no (or insufficient) evidence of use. The Applicant has chosen to take this opportunity and has limited the Class 9 Goods to ‘computer software for use in searching, reviewing, purchasing and downloading electronic games and software applications; none of the forgoing being computer operating systems software’ and the Class 42 Services to ‘providing temporary use of non-downloadable computer software and online facilities to enable users to access and download computer software’. The amendments have now been made and on that basis I also accept Applications 1666274 and 1693917 for possible registration with the endorsement ‘Evidence provided under subsection 41(3)’.

Nicholas Smith Hearing Officer

Oppositions and Hearings 14 March 2018