Wednesday, February 25, 2015

The APP STORE TM in Australia : Expert evidence as argument and the utility of survey evidence in trade mark registrations

Apple tried to file a trademark registration for the name APP STORE in Australia back in 2008.

The company has famously been using the term for the digital distribution marketplace exclusive to their devices/operating systems, and tried to get the name registered under Classes 35 (Advertising; business management; business administration; office functions), 38 (Telecommunications.), and 42(Design and development of computer hardware and software.).

The application was initially accepted for registration, but IP Australia submitted a late objection for the Class 35 registration, citing that the mark is not distinctive enough to fall within the scope of section 41(5) of the unamended Trade Marks Act 1995 (Act).

Essentially, while the term app store (a store for Apps) could apply to Apple’s digital marketplace, the term could also apply to other similar services such as Google’s Google Play Store.

Apple wasn’t happy with the decision. It filed an appeal, providing testimonials from a number of witnesses that consist of Apple employees and a professor of linguistics (Harris), along with survey evidence from the director of a market and social research company (Newspoll survey).

Apple argued:

Monday, February 2, 2015

Use of R Symbol: A Nasty Export Risk

The Registered Trademark Symbol or ® means that the brand that it is attached to is a service or trade mark that has been registered with a national trade mark office.

Like the trade mark (™) symbol, use of this symbol is not a mandatory requirement, but it is illegal in some countries to use the symbol if the preceding mark is not officially registered with tat particular national trade mark office.

Some countries consider usage of the R symbol on unregistered marks to be an offense subject to fines but there are also countries like South Korea, Russia, India, Japan, Egypt, and Libya where violators are subject to imprisonment.

The symbol ™ denotes that a mark is a trade mark – it may or may not be registered. The ® symbol denotes that the mark is registered in a national trade mark office. Some countries use different variations. Spain and Portugal, for instance, uses MR while Germany uses WZ. In Canada, the French counterpart to ® is MD (marque déposée) and the counterpart to TM is MC (marque de commerce).

It is important to deal with the R symbol on a per country basis due to the differences in how they treat the symbol. The major issue with that, as with all jurisdictional labelling requirements, is that the exporter doesn’t always know or have control over where the products will end up. Third parties could ship the products to different countries.