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Thursday, 19 May 2011

Alicante set for West Coast battle over AppStore

It's not the logo that causes
the problem -- it's the word
So preoccupied has this Kat been with the intense trade mark activity on the US West Coast that he has neglected to discuss a West Coast battle that has been taking place on his own cosy home patch, the United States of Europe. Techflash reported last week ("Microsoft challenging “Apple App Store” trademark in Europe" by Greg Lamm) that Redmond-based Microsoft has joined ranks with, HTC, Nokia and Sony Ericsson in filing for a declaration of invalidity of Apple's AppStore Community trade mark (from a quick glance at the UK IPO's website this Kat notes four CTM filings in Apple's name, two of which have proceeded to grant -- one being based on a prior Trinidad and Tobago filing). Anyway, the article continues:
"Microsoft has already challenged the Apple App trademark in the U.S., asking the U.S. Patent and Trademark Office to refuse the iPhone maker’s registration request on the basis that it’s a generic name, not something to which Apple can lay exclusive claim.

Apple has equated the right to claim “App Store” as similar to Microsoft’s own defense of one of Microsoft’s most valuable trademarks -- Windows -- which Apple has said also is a generic name. ...

Microsoft and the other companies want to invalidate Apple’s trademark registration, “claiming the trademarks should not have been granted because they lack distinctiveness,”according to a Microsoft spokesman. Here is a statement from Microsoft:
'Microsoft and other leading technology companies are seeking to invalidate Apple’s trademark registration for APP STORE and APPSTORE because we believe that they should not have been granted because they both lack distinctiveness. The undisputed facts [Hold on, says Merpel -- this is European intellectual property law. The fact that something's a fact, even if it's indisputable, doesn't make it a fact unless the Court of Justice of the European Union says it is -- and that's a fact ] establish that ‘app store’ means exactly what it says, a store offering apps, and is generic for the services that the registrations cover'".
The IPKat recalls the expectation, when the Community trade mark system was launched, that there would be joined, if not joint, oppositions to CTM applications (he doesn't think anyone mentioned joint applications for declarations of invalidity, presumably because it was understood that the Office for Harmonisation in the Internal Market (OHIM) would only ever grant valid CTMs.  He is however hugely impressed that this application has been filed by Microsoft, HTC, Nokia and Sony Ericsson -- which, if not evidence in itself that the mark is generic or descriptive, is evidence that an important segment of the industry clearly does hold that view.   Merpel adds, it's also a smart way for a few businesses to cut their legal overheads by doing a spot of sharing ...

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