Appstore madness: fighting like two cats in a sack

In the war of Cat nerd memes- who would win?

In the IP war of the technology giants, there are the battles fought to ascertain which design or patent was first [--in the UK, it included deciding which is the coolest], but let’s not forget the sister-battles (or sibling squabbles? wonders Merpel) over claiming the ultimate trade mark rights for the name APP STORE.

A little bit of history on the worldwide APPSTORE battleground: once upon a time [on July 11 2008 to be exact] Apple Inc. launched its APP STORE service to sell applications for its mobile devices.

As is usually the case in any clash of the IP titans, Apple did not remain as the only fat cat in this sand box for long. On the other side of the pond [---aka the Atlantic for European cats] Apple applied to register the APP STORE mark with the U.S.P.T.O on July 17, 2008, which became the object of an opposition filed in 2010 by Microsoft Corporation. The TTAB proceedings were then stayed pending the outcome of an action filed in March 2011 by Apple before the US District Court for the Northern District of California against Amazon a few days after it officially launched its own “appstore”, offering applications for use on smartphones running Google Inc.’s Android platform.

On January 2, 2013 the NDCA granted a partial motion for summary judgment in favor of Amazon on the grounds that Apple had failed to establish that – as it had claimed – Amazon made false statements of fact (express or implied) that qualify as false advertisements under § 43(a) of the Lanham Act (reported here in detail by the IPKat). This claim constituted the 5^th cause of action in the complaint filed by Apple which included [many other plot twists such as] trademark infringement, dilution and unfair competition. Two years later (July 9, 2013), Apple signed a covenant not to sue to Amazon and US District Judge Hamilton dismissed the lawsuit. Thus in U.S courts, no decision will ever be issued to reveal whether consumers will likely be confused over competing smartphone app retail stores [-- whether they will also live happily ever after with their smartphone or tablet of choice is another story...].

While keeping an eye on the TTAB opposition proceedings filed by Microsoft against Apple on the grounds of genericness, this Kat is closely watching [-- how appropriate with a surname meaning ‘the guard’] the parallel Invalidity actions filed by Amazon, Microsoft & Co. against the Community trade marks ‘APPSTORE’ and ‘APP STORE’ before OHIM as reported here.

The details of the respective claims and observations in reply can be found by inquiring minds on the scrolls kept in Alicante or in a more modern database here. Since the U.S. legal concept of ‘genericness’ is not recognized as such by CTM law, in Europe, the APP STORE trade marks were claimed to be registered in breach of Article 7 (1) b), c)  and d) of the CTMR because they are descriptive and lack distinctive character or, in the alternative, they have become customary in the trade for services in Classes 35, 37, 38 and 42 including ‘operating online market places or buying, selling, and exchanging computer software and on demand applications’.

Grumpy Cat Knight or Dame

The battle thus far has primarily centered around linguistics [-- a curse for some CTM knights and an enchantment for others]. For example: is the word APP understood as ‘application’ in European countries? for the average European English-speaking consumer does STORE only refer to a big retail shop at a ‘brick and mortar’ retail location - as claimed by Apple? To the vast delight of the town folk, more than one pan-European survey was conducted on whether APP STORE is identified with Apple services – to demonstrate ‘Acquired distinctiveness’ within the meaning of Article 7 (3) CTMR and ultimately that APP STORE has acquired secondary meaning because it was coined by Apple. Much of this epic is yet to be written, thus we must leave it as “to be continued…”

‘Hear Ye, Hear Ye’ – Meanwhile, in the not so-far away kingdom of Spain and middle-earth’s next-door neighbour Australia, APP STORE has been held as non-distinctive for application store services.

Last but not least, this Kat would like to thank her fellow Cat woman associate for giving her a paw for this post.

There’s an app for that! on the IPKat.

Cats apps available here and here