Apple Inc.

[2013] ATMO 13

TRADE MARKS ACT 1995

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

Re:Trade mark application number 1252301 (35, 38, 42) – APP STORE - in the name of Apple Inc.

Delegate:	Bianca Irgang
Representation:	Applicant: Ron Webb of counsel instructed by Baker and McKenzie
Decision:	2013 ATMO 13 Ex parte - S33 – section 41 ground for rejection – Trade mark is descriptive– consideration of subsections 41(5) and 41(6) –insufficient evidence and no other circumstances made out – application rejected.

Background

1. Apple Inc. (‘the applicant’) filed application number 1252301 on 18 July 2008 in classes 35, 38 and 42 of the International Classification of Goods and Services. Details of the application are set out below.

   Trade mark:  APP STORE

   Trade mark application:        1252301

   Priority Date:  18 July 2008

   Convention Details:              7 March 2008
     39582
     Trinidad and Tobago

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

   Class 38:Telecommunication services; electronic transmission of computer software via the Internet and other computer and electronic communication networks; provision of connectivity services and access to electronic communications networks for transmission or reception of computer software

   Class 42:Maintenance, repair and updating of computer software and of handheld mobile digital electronic devices and other consumer electronics; providing information concerning computer software and web-based applications via the Internet and other computer and electronic communication networks; providing consulting services and technical troubleshooting support for computer software and for handheld mobile digital electronic devices and other consumer electronics; providing search engines for obtaining data via communications networks; providing temporary use of 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

2. An adverse report was issued to the applicant at the initial examination stage on 7 September 2008 raising a section 44 ground for rejection. The cited trade mark registration no. 1156967 was later assigned to the applicant and the section 44 ground for rejection was withdrawn. The application was then accepted. However, acceptance of the application was revoked on the basis of a section 41 ground for rejection. A total of four adverse reports were issued to the applicant after revocation with the final report maintaining a section 41(5) ground for rejection against the specific services claimed by the applicant in class 35 only. The applicant was unable to provide sufficient evidence to satisfy the examiner and thus overcome the objection. The applicant requested a hearing on the matter which I conducted as a delegate of the Registrar of Trade Marks in Canberra on 30 May 2012. At the hearing the applicant was represented by Mr Ron Webb of Counsel.

   Evidence

3. The evidence provided in support of trade mark application no. 1252301 consists of the following declarations:

Declarant	Position	Date Made	Exhibits
Thomas R. La Perle[1]	Director in the Legal Department of Apple Inc.	8 June 2011	TRLP-1 to TLRP-24
Nicholas Keynes	Account Director at Newspoll	23 November 2011	NDK-1 to NDK-5
Thomas R. La Perle[2]	Director in the Legal Department of Apple Inc.	25 May 2012	TRLP-1
Robert Anthony Arnold	Partner in the Firm of Baker & McKenzie	29 May 2012	RAA-1 to RAA-2

[1] For ease of reference I will refer to this Statutory Declaration as ‘La Perle 1 declaration’ through the course of the decision.

[2] I will refer to this Statutory Declaration as ‘La Perle 2 declaration’ .

The Law

4.Section 33 of the Act 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.

Note:For this Act see section 6.

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

Note:For limitations see section 6.

(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.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

Presumption of Registrability

1. Mr Webb argues that the presumption of registrability which arises under section 33 of the Act is particularly relevant for this case. He has relied on the authority of Registrar of Trade Marks v Woolworths Limited[3] where French J stated:

   ‘The mandatory language of s 33 and the legislative policy which forms it also suggest that the acceptance state is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition.’

   [3] (1999) APIC 91-400 at 34

2. By virtue of section 33(1) of the Act, the Registrar must accept an application unless satisfied that there are grounds for rejecting it. The grounds for rejecting a mark are well established and if the Registrar holds, on balance, that one of these grounds constitutes a reason for rejection, the provisions of subsection 33(3) come into operation.

3. Subsection 33(3) of the Act sets down the provisions for rejecting an application. It prescribes that if the Registrar is satisfied either that the application is not in accordance with the Act, or that there are grounds for rejection, the application must be rejected. This is mandatory language. If subsections 33(3)(a) or (b) apply, the Registrar must reject the trade mark application.

4. Therefore, should I as a delegate of the Registrar decide that a valid section 41 ground for rejection exists and if the applicant is not able to satisfy me that the evidence it has provided is sufficient to overcome that objection then I must reject the application as per subsection 33(3).

   Discussion

5. The applicant requested a hearing in order to argue that the section 41 ground for rejection against its trade mark application was not appropriate since the trade mark is distinctive of its services. Section 41 provides the following:

   Section 41.  Trade mark not distinguishing applicant's goods or services

   (1)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant. 

   Note 1: For applicant and predecessor in title see section 6.

   Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

   (2)  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 (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.

   (3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

   (4)  Then, if the Registrar is still unable to decide the question, the following provisions apply.

   (5)  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: 

   (a) the Registrar is to consider whether, because of the combined effect of the following: 

   (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

   (ii) the use, or intended use, of the trade mark by the applicant;

   (iii) any other circumstances;

   the trade mark does or will distinguish the designated goods or services as being those of the applicant; and 

   (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

   (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

   Note 1: For goods of a person and services of a person see section 6.

   Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

   (6)  If the Registrar finds that 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, the following provisions apply: 

   (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant-the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

   (b) in any other case-the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

   Note 1: Trade marks that are not to any extent inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: 

   (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or 

   (b) the time of production of goods or of the rendering of services.

   Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

6. Justice Branson discussed the structure and operation of section 41 of the Act in Blount Inc v Registrar of Trade Marks[4]as follows:

   [4] [1998] 440 FCA (1 May 1998), 40 IPR 498 at 504

   Subsections (3) - (6) of s 41 of the Act are designed to control the process by which the registrar is to reach a conclusion as to whether the trade mark for which registration is sought is 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). If the trade mark is not so capable, the application for its registration must be rejected: s 41(2). Subsection (3) requires the Registrar first to "take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons". Having taken such matter into account, it is theoretically open to the registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that 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; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or 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 designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish: s 41(2) and (3). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) "unable to decide the question". That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paras (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paras (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparas (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application: s 33(1). If the Registrar, having considered the combined effect of the matter listed in subparas (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application.

7. The first consideration under section 41 of the Act therefore lies within subsection 41(3) and involves an assessment of the extent to which the trade mark is inherently adapted to distinguish the designated goods and services from the goods or services of other traders.

8. The test to be applied in order for me to reach a conclusion regarding one of Justice Branson’s (a), (b) or (c) options above, is found in the words of Justice Kitto in ClarkEquipment Co v Registrar of Trade Marks[5]:

   …. whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   [5] (1964) 111 CLR 511 at 514

9. Superimposed on this test is the so called ‘presumption of registrability’, whereby the Registrar must accept an application unless the application has not been made in accordance with the Act, or there are grounds for rejecting it.

10. The consideration of inherent adaptability to distinguish is something which depends on the nature of the trade mark itself. It is not a test conducted with reference to specific traders who happen to have similar trade marks, but a general question of whether “other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods” (per Justice Kitto in F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd.[6]

    [6] (1965) 112 CLR 537).

11. The applicant’s submissions on the section 41 ground for rejection focus on the following key areas:

    ·    The trade mark has the capacity to distinguish at the date of the application (18 July 2008)

    ·    No section 41 objection was raised against the trade mark when it was initially examined

    ·    The applicant is now the owner of the trade mark no. 1156967 for APPSTORE (with a priority date of 13 December 2006) which obtained registration without a section 41 ground for rejection being raised

    ·    The applicant has extensive use of the trade mark which is sufficient to overcome a section 41 ground for rejection.

12. Mr Webb submitted at the hearing that I should find that the applicant’s trade mark APP STORE has the capacity to distinguish. He pointed out that the expression APP STORE did not have a commonly understood or used meaning at the time the application was made in 2008. Mr Webb asserted that it was for this reason that the initial examiner did not take a section 41 objection to the trade mark. The Witness Statement[7] of Professor John Harris[8] (‘Professor Harris’) purportedly supports Mr Webb’s submission by stating that the term APP STORE cannot be fully understood by simply combining the meanings of its component parts. A consideration of the applicant’s trade mark shows that it consists of the two words APP and STORE in plain text.

    [7] Found in Exhibit RAA-1 accompanying the Statutory Declaration of Robert Anthony Arnold.

    [8] Professor John Harris of University College of London (‘UCL’) holds a PhD in Linguistics and an MA in German and Linguistics and is a faculty member of UCL’s Department of Phonetics and Linguistics since 1985.

13. APP is defined in the Oxford English Dictionary as:

    [9] Professor Harris gives further background that this definition is a ‘clipped’ form of Application which has been in use since at least 1950.

    noun An application, esp. an application program[9]

14. STORE is defined in the Oxford English Dictionary as:

    A place where merchandise is kept for sale (now, equivalent to the British use of SHOP)

1. I note that by applying the general meanings which may be attributed to the separate words “APP and “STORE” the applicant’s trade mark, APP STORE, can therefore be defined as a store (or retail outlet) that sells or provides computer application programs. Given the applicant’s claimed services in class 35, the applicant’s trade mark clearly indicates that it operates a retail store which sells software application programs. I believe that the expression APP STORE is a term which is relatively straight forward, easily defined and well understood by modern digital-savvy consumers who are likely to be the customers seeking out and using the applicant’s services.

2. I also note from the La Perle 1 Declaration that Mr La Perle states: ‘The APP STORE service is a service that enables users of Apple portable devices such as the iPad tablet computer, the iPhone communication device and the iPod touch media player to browse and download software programmes for use with those devices. The APP STORE service is accessed either directly from these devices or through Apple’s popular iTunes desktop software’. From this statement it is clear that the applicant is using APP STORE on services for which the expression APP STORE is purely descriptive.

3. The examiner has raised a section 41(5) ground for rejection against the present application but given the directly descriptive definition of the expression I am not satisfied that APP STORE has any inherent adaptation to distinguish the applicant’s services in class 35. Indeed, upon careful consideration of the applicant’s other services listed in classes 38 and 42, I am satisfied that a ground for rejection under section 41(6) applies to the entirety of the applicant’s trade mark application on the basis that it is a purely descriptive term which is not to any extent inherently adapted to distinguish the designated services from the goods or services of other traders.  

4. In respect of the services listed in classes 38 and 42, I note the following. The applicant’s services in classes 38 and 42 include electronic transmission of computer software via the Internet and other computer and electronic communication networks and the maintenance, repair and updating of computer software and of handheld mobile digital electronic devices and other consumer electronics. With an APP STORE (like a “computer store”) a number of other services are likely to fall within the purview of the store and this is likely to be understood and assumed by consumers. It is likely that a place a customer has ‘purchased’ a good or service from will be available to deal with faults or issues that the customer encounters regarding those goods or services.

5. As an aside, Mr Webb’s submissions about the use and/or lack of use of the expression APP STORE by other traders makes an unwarranted assumption that customers and other traders will tend to disregard the general and descriptive meaning of the expression APP STORE in favour of using other descriptive expressions such as SOFTWARE APPLICATIONS SHOP. However, the use of the acronym APP in place of Application and the supposedly interchangeable use of words such as SHOP with STORE does not confer the requisite capacity to distinguish on the applicant’s trade mark. Nor do I believe that a customer looking for application programs is going to be ignorant of or ignore the inherently descriptive meaning of APP STORE particularly when it is presented in plain text.

6. Mr Webb further submitted that I should find that the applicant’s trade mark APP STORE capable of distinguishing the applicant’s services due to the applicant’s trade mark registration no. 1156967 for the single word APPSTORE. The details of this registration are set out below:

   Trade mark:  APPSTORE

   Trade mark registration:      1156967

   Priority Date:  13 December 2006

   Convention Details:              14 June 2006
     78907865
     UNITED STATES OF AMERICA

   Goods Specification:             Class 35: Operating on-line marketplaces for buying, selling and exchanging computer software and on-demand applications

   Class 42:Application service provider (ASP) featuring computer software in the field of business project management, business knowledge, information and asset management, customer relationship management, sales, marketing, e-commerce, electronic messaging, and web site development

   Endorsements:  By virtue of the Rule 22 of the Common Regulations of the Madrid Protocol, 1156967 was transformed from International Registration number 909450 to a national registration on 14 October 2009

7. Mr Webb has asserted that the Trade Marks Office had already determined that this APPSTORE trade mark was capable of distinguishing the applicant’s class 35 services and that the applicant’s prior rights in this registration extended to the present application. I, however, do not accept this reasoning.

8. It is accurate for Mr Webb to say that there was no ground for rejection raised against the applicant’s earlier trade mark registration for APPSTORE despite the application also covering relatively limited services in class 35. However, based upon the official file for trade mark registration 1156967, it is not possible to ascertain whether the examiner ever assessed or conducted appropriate research to determine if the expression APPSTORE had any descriptive meaning. Therefore, I cannot agree with the applicant’s argument that the acceptance of this APPSTORE trade mark means that the present application is prima facie capable of distinguishing the applicant’s services. Further to this, I also note that this trade mark registration was initially owned by an unrelated third party and that the trade mark was assigned to the applicant in 2009 after it was initially raised as a section 44 ground for rejection against the current application. It is clear that other parties unrelated to the applicant have considered the expression APP STORE in relation to the same services.

9. Each case must be assessed on its merits - with regard to the relevant judicial tests and not only with regard to the state of the Register.  Relevant to this are the comments of Justice Wilcox in Ocean Spray Cranberries Inc v Registrar of Trade Marks[10] at paragraph 35 where, after approving the reasoning of Jacob J. in British Sugar plc v. James Robertson & Sons Limited[11] to the effect that a comparison with other marks on the Register is in principle irrelevant when considering a particular mark tendered for registration, his Honour observed:

   ‘I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered.’

   [10] (2000) 47 IPR 579; (2000) AIPC 91-539

   [11] [1996] RPC 281 at 305

10. Given all of the above, I am satisfied from the general meaning of the expression APP STORE that a section 41 ground for rejection exists for this trade mark application when applied to all the applicant’s services. Whether that ground for rejection is under either section 41(5) or 41(6), the establishing of a ground of rejection under either provision need not be fatal to the application.

11. Given the applicant’s evidence and submissions pertaining to the first use of its APP STORE trade mark and the Witness Statement of Professor John Harris of the linguistic implications (both current and historical) of the expression APP STORE, I am satisfied that the applicant has provided all the relevant evidence it has in order to argue against either a section 41(5) or 41(6) ground for rejection being raised in respect of this trade mark application. I will consider the applicant’s evidence of use in respect of the section 41(5) ground for rejection. If the applicant’s evidence is insufficient to overcome a section 41(5) ground for rejection, it follows that the applicant would be unable to overcome the section 41(6) ground for rejection.

    Section 41(5) ground for rejection

12. I turn now to the applicant’s evidence of use of its trade mark APP STORE. In exhibit TRLP -6 accompanying the La Perle 1 declaration there is a copy of the report issued by the United States Patent and Trademark Office which stated that the applicant’s trade mark for the expression APP STORE was ‘merely descriptive’. The applicant provided evidence of use in response to this report which was sufficient to persuade the United States Patent and Trademark Office that its trade mark had acquired distinctiveness. This evidence is currently before me for my consideration. It is clear from that evidence that the applicant has extensively used its APP STORE trade mark in the USA and internationally. However, it remains to be seen whether the applicant’s evidence of use demonstrates that the trade mark is capable of distinguishing the applicant’s services.

13. In the La Perle 2 declaration, Mr La Perle states that the applicant launched its APP STORE service worldwide, including in Australia, on 11 July 2008 which was seven days prior to making this trade mark application. According to Mr La Perle ten million software applications were downloaded worldwide in the first three days of operation and 5.5 billion applications were downloaded worldwide within the first year. No breakdown of figures for downloads in Australia during this time has been provided. However, Mr La Perle states that over 850 million applications have been downloaded in Australia via the Australian APP STORE since the launch of the service in 2008.

14. The applicant has submitted that it has made very substantial use of its APP STORE trade mark in Australia. To this end it has provided press releases of Australian origin relating to its APP STORE activities (exhibits TRLP-8 to TRLP-16 accompanying the La Perle 1 declaration). In these press releases the applicant announces significant downloads from customers using its APP STORE service. None of the figures provided in these press releases are broken down to show how many downloads occurred in Australia during these time frames. The figures discussed in the press releases are in relation to ‘worldwide’ downloads and certainly the total worldwide download figures since the APP STORE service was introduced are very significant and increasing each year.

15. The applicant’s evidence demonstrates that it has made very substantial use of the trade mark and Mr La Perle’s statement that over 850 million applications have been downloaded in Australia since the launch of the APP STORE service do indicate that the APP STORE service is widely used in Australia. While the actual sales and advertising figures are given in approximations, it is clear that the applicant’s APP STORE services are widely used throughout the whole of Australia and internationally. Whether that fact amounts to clear evidence that the words APP STORE have developed a secondary meaning as a trade mark of the applicant requires further investigation.

16. In the Treat decision[12] Jacob J of the UK High Court of Justice considered the evidence provided in the action between the parties.  He said:

    I have already described the evidence used to support the original registration.  It was really no more than evidence of use.  Now it is all too easy to be beguiled by such evidence.  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. 

    [12] British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281

17. Justice Jacob then went on to say the following:

    It is precisely because a common laudatory word is naturally capable of application to the goods of any trader that one must be careful before concluding that merely its use, however substantial, has displaced its common meaning and has come to denote the mark of a particular trader.  This is all the more so when the mark has been used in conjunction with what is obviously taken as a trade mark.

18. As already mentioned, the Witness Statement of Professor Harris states that the term APP STORE cannot be fully understood by simply combining the meanings its component parts yet I note from the evidence that the applicant has also used the expression APP STORE for its general meaning rather than as a trade mark. A copy of one of the applicant’s press releases located in exhibits TRLP-13 and TRLP-14 accompanying the La Perle 1 declaration states in paragraph 5 and paragraph 3 respectively:

    “The App Store on iPad lets you wirelessly browse, buy and download new apps from the world’s largest app store.”

19. This further emphasizes the fact that the expression APP STORE was directly descriptive of the applicant’s services as of March and May 2010. Further exhibits make reference to ‘the largest applications store in the world’[13]. Other examples of use of the expression APP STORE can be found in exhibit TRLP-21 accompanying the La Perle 1 Declaration where an article in the January 2010 edition of Shop Till You Drop magazine titled “Gucci? For Free?” referred to the applicant’s services stating:

    “…Log on and download from Apple’s App Store at itunes.com/appstore.”

    [13] TRLP-10 and TRLP-11

20. And in exhibit TRLP-21 accompanying the La Perle 1 Declaration is an article from the Daily Telegraph newspaper entitled “In the app of luxury” dated 16 December 2009 where the applicant’s services are referred to as:

    “Since the App Store – part of Apple’s iTunes Store – opened 17 months ago…”

21. In both of the above instances the applicant’s APP STORE is very clearly attributed to being a part of Apple and/or associated with its iTunes or iPhones. The evidence of use that the applicant provided contained well over 100 representations of the trade mark in a variety of situations but of all of these, only a very few do not include one or more other distinctive trade marks owned by the applicant. The majority of examples of the trade mark provided in the evidence show that it is closely used with the word ‘APPLE’ or with ‘iTunes”. It is also evident from the material before me that the applicant’s APP STORE service may only be accessed by consumers through websites and stores which are owned by the applicant. In other words, a consumer must first be accessing one of the applicant’s primary or ‘top level’ identifying sites before being able to access the applicant’s secondary APP STORE branded service from within those sites.

22. In any event, the applicant’s evidence of its use of the expression APP STORE acting as a distinctive trade mark is severely limited. There is no reason the applicant cannot use one, two or several trade marks together in its advertising or packaging. However, the vast majority of all the advertisements and press releases show what Jacob J described in Phillips Electronics NV v Remington Consumer Products Ltd[14] as a ‘limping mark’; that is, the expression APP STORE is more often than not accompanied by the well known trade mark APPLE and other expressions such as iTunes, iPhone, iPad or iMac.

    [14] (1997) 40 IPR 279

23. Professor Harris has stated that the compound term APP STORE is intimately linked with the term APPLE and that an association between APP STORE and APPLE will be triggered regardless of how APP STORE is written. This may very well be the case, but the applicant’s evidence does not support this assertion. There is very limited evidence from independent third parties which would support that APP STORE solus has overcome its inherently descriptive meaning (when applied to the applicant’s services) to act as a badge of origin for the applicant.

24. I have also considered the Newspoll survey which was conducted in September 2011 and designed to assess consumer recognition and association of the trade mark APP STORE with the applicant. Mr Nicholas Keynes states in his declaration how the survey was conducted and has provided the results. The results of this survey indicate that about 79% of the people surveyed had heard of the expression APP STORE and that a good portion of these people also associated that expression with the applicant or one of the applicant’s other trade marks. The total number of people surveyed was comparatively small, being only just over 1000 people. While the margin of error in such a survey could be considered to be relatively small, I believe that a single survey conducted a number of years after the priority date of the application combined with limited advertising and marketing evidence or third party articles is just not sufficient to overcome the general meaning inherent in the words APP STORE.

25. I consider, from what is demonstrated in the evidence before me, that the applicant’s and third party use of the term APP STORE in conjunction with others of the applicant’s trade marks and identifiers shows that APP STORE does not distinguish the applicant on its own. Nor does the evidence provided sufficiently demonstrate that APP STORE has acquired a meaning related to the applicant which overshadows its descriptive meaning. The applicant’s evidence does not satisfy me that the trade mark is capable of distinguishing the applicant’s services from the similar services of other traders in the same field. As the applicant’s evidence is insufficient to overcome a section 41(5) ground for rejection, it follows that it is also insufficient to overcome a section 41(6) ground for rejection.

    Decision

26. A valid ground for rejection of the application exists under subsection 41(6).

27. Therefore, I reject trade mark application no. 1252301 in its entirety.

    Bianca Irgang
    Hearing Officer
    Trade Marks Hearings
    22 February 2013