Apple Australia loses fight to have 'App Store' trademarked

Apple's attempt to claim trademark ownership over the term 'App Store' has been thrown out of the Federal Court.

Apple took the Australian Registrar of Trademarks to court mid last year after the Office refused Apple's trademark application for the term, arguing 'App Store' did not distinguish Apple's services from similar offerings.

Justice Yates of the Sydney Federal Court today backed the Trademark office's decision and ruled the term was not specifically associated with Apple's offerings, and its application for a trademark should therefore be rejected.

Apple had argued that it had changed the definition of the term through the release of its iPhone, despite 'application' and 'app' existing in common use before Apple's product was released.

But Yates today said Apple, in using both terms in its 2008 announcement of its first iPhone, had not been using the terms in any new or otherwise special way.

".. the promotion of Apple’s App Store service was undertaken in connection with the name Apple, the launch of the Apple iPhone 3G, and the facility provided by the App Store service for acquiring apps for use on Apple products.

"Thus, it would have been rational for members of the public seeking apps for their Apple products to think that there was an association between Apple and the App Store referred to for acquiring those apps. 

"But that is quite a different thing from those members of the public attributing trade mark signification to the words “app store” themselves."

- Apple Inc. v Registrar of Trade Marks [2014] 

He said Apple had not established that 'App Store' distinguished its own services from its competitors. 

"Indeed, there is no evidence to suggest that, even at the present time, the words “applications” and “apps” do not still bear the general meaning of “computer application..

"Whether the application software is to be used on a handheld device or, say, a desktop computer, the software is (and was at the filing date) still an “app”."

- Justice Yates in Apple Inc. v Registrar of Trade Marks [2014] 

He dismissed Apple's appeal and ordered the company to pay the Trademark office's costs.

The company has launched similar lawsuits in other countries, including against Amazon over its similar use of the term "app store" - a lawsuit it later dropped.