21 May 2011

Apple’s Appstore Or Tradmarking Descriptiveness

Image by Rudi Riet on Flickr

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Let me ask you a funny question: should a keeper of a greengrocer’s shop be granted the trade mark “greengrocery” for, say, class 31?

I can almost hear you shouting “No, for God’s sake, he should not!”

Well, I was joking, but why actually not? Is it because if the good greengrocer monopolised an everyday’s term for his trading purposes no other greengrocer would be able to run its shop?

Let me address this question in the story and consecutive analysis I am going to present below.

Believe it or not, but Apple managed to register the word marks

Appstore And App Store

with the Office For The Harmonization In The Internal Market (OHIM), which has authority to grant Community Trade Marks (CTM). Appstore bears the number 005554779 and is registered for classes 35 and 42. App Store bears the number 007078314 and is registered for classes 35, 37, 38 and 42.
If you like, you can conduct your own search using OHIM’s search application.

What both marks have in common is the fact that their registrations are pending cancellation.

Funnily, a broad front consisting of large technology companies such as Microsoft, HTC, Nokia and Sony Ericsson each filed formal applications for declaration of

Invalidity

of Apple’s two trade marks with OHIM.
The Intellectual Property Watch has the story and I strongly recommend you to read it.

Anyway, what could have been the reasoning of the tech companies, what could they have claimed? That is easy – what did we talk about at the beginning of this article, huh?
Yes, we talked about the monopolising of an everyday’s term. Everyday’s terms are generally considered descriptive for the purposes of trade mark law.
The CTM Regulation (207/2009) provides in its Article 7 (1) (c) that no registration shall be granted to

trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

In other words, the tech giants have very likely claimed that the Apple’s trade marks are descriptive and therefore should have never been granted. Since OHIM granted them once to Apple, they should now be invalidated.

But wait a minute, what about

Baby-Dry

and what if Apple relied on it as authority?

Indeed, Baby-Dry was the high point of the European Court’s liberal attitude to registrability of descriptive marks. However, if I was to advise Apple in this instant case, I would not recommend them to rely on Baby-Dry.
Because in its later

Doublemint

judgment the Court realised that matters had gone too far in Baby-Dry and needed to be reined in.
In Doublemint the Court referred to the so called principle of availability, which says that there is a public interest that descriptive terms may be freely used by all traders.

Let me wrap it up: Appstore and App Store are (very likely) descriptive and OHIM might rule that they should be free for all.
By the way, have you read about Nokia’s plan to launch a co-branded App Store?

My Conclusion

We must not forget that trade marks provide their proprietor with a limited monopoly over the use of a sign in connection with the marketing of goods and/or services.
However and since Baby-Dry is no longer reliable authority, Apple’s adversaries have a strong case and good arguments to invalidate Apple’s registered trade marks.

Finally, you do not want Apple to trademark the descriptiveness, do you?