Apple loses bid for Australian copyright on 'app store'

Apple has failed in an attempt to convince the Australian Federal Court that it should have copyright over the term 'app store,' in a case that had seen the iPhone maker try to restrict rivals like Microsoft and Google from ever using the words. Photo: Glenn Hunt

Paul Smith

Apple failed to convince the Federal Court it should have copyright over the term 'app store' in a case that had seen the iPhone maker try to restrict rivals such as Microsoft and Google from using the words.

The world's biggest tech company had previously been refused permission by the Registrar of Trademarks to trademark the term.

While Apple made the term famous as millions of consumers around the world used its store via their mobile devices,Judge David Yates found the term was used more broadly than by Apple and should not be restricted.

Apple argued that prior to it using the term, 'app store' was not a common English expression, and that 'app' was not even an ordinary or common English word. It said the use of 'store', when combined with 'app,' involved an element of creativity, which meant the term belonged to the company.

Justice Yates ruled the word 'app' had been widely used in technology circles in reference to computer applications for years and the fact that iPhones brought the term to wider consciousness did not mean Apple invented it.

He found that using the term 'app store' did not distinguish any designated services as being Apple's. 'It may well be that, because of the ubiquity of handheld 'smart' devices, the word 'app' has, over time, come to be more closely identified with computer applications used on such devices,' the judge said.

'But the changing patterns of commerce and consumer preference both before and after 2008 do not mean that, at the time that Apple launched its app store service and, more particularly, at the time it applied for the mark, it had coined a new word 'app' or had given that word a changed meaning.'

He said the word 'store' was similarly unoriginal, and said its use in 'app store' had not ushered in a new meaning of the word.

Justice Yates also ruled that while Apple's App Store operated only online, its case was aimed more broadly.

'There is no dispute that they extend to that environment; but they also extend to retail store services provided by other means, including from a physical store,' he said.

Apple said that rival technology companies had no reason to use the term 'app store', other than because Apple had popularised it.

It observed that BlackBerry had used 'BlackBerry World' as the name for its equivalent online store, Microsoft had used 'Windows Phone Store', and Google used 'Google Play.'

A technology and intellectual property lawyer from Cooper Mills, Erhan Karabardak, said the decision was a victory for businesses which want to use common descriptions for services.

'The principle in Australian trademark law is well established that a court must consider the common right of the public to make honest use of words forming part of the common heritage. This decision is a win for other traders and once again confirms that courts will maintain the rights of traders,' he said.

'It is a lesson to trademark applicants that trademarks should be as distinctive as possible to have a chance at being registered, and avoid the pitfalls of seeking to register trademarks that are descriptive of goods and services they provide.'

A senior associate at law firm Griffith Hack, Jürgen Bebber, said Apple has a case pending to the use of the words 'app store' in relation to it being used for 'goods', as opposed to 'services' in Wednesday's ruling.

'The core questions for consideration by Justice Yates were whether the combination of words 'app store' was to any extent inherently adapted to distinguish Apple's services and, if not, whether those words were capable of distinguishing Apple's services because of its use of those words as a trade mark prior to the filing date of the application on 18 July 2008. Both of these questions were answered in the negative,' Mr Bebber said.

The case was dismissed and Apple was ordered to pay costs.

Apple declined to comment when contacted by The Australian Financial Review.

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