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Legal expert questions Apple Vs. Amazon case

Distinctive or descriptive debate may make Apple victim of own success

The legal rumblings currently under way between Apple and Amazon over the use of the phrase App Store may focus on the decision of whether the term has become common parlance, legal experts have told GamesIndustry.biz, even though its familiarity may well be purely down to Apple's success.

The debate over the trademark was brought into sharp focus today by Amazon's launching of the Android App Store yesterday in the US. Apple has mounted a legal case accusing Amazon of infringing its App Store trademark.

Despite the fact that Apple registered a trademark for the App Store at the time of its launch, that term has arguably now become so common that it is simply a description of the store, rather than a distinctive trademark. If that is judged to be the case, any operation fitting that business description will be allowed to use it.

"Trade mark laws around the world provide that a trade mark is not registrable if it is devoid of distinctive character or incapable of distinguishing the goods and services of one entity from those of another, i.e. if it is descriptive," Sheridans lawyer Alex Chapman told GamesIndustry.biz. "Accordingly a 'Store' that sells 'Apps' may be considered to have no distinctive character because it is descriptive of the service.

"However Apple did secure a registration and at the time it filed for the trade mark initially "app" was not such a common phrase and the concept of buying them through a store was certainly not usual. Hence the 'App Store' mark was registered."

Since then, however, an App Store has become a relatively widely understood concept, essentially making Apple a potential victim of its own success.

"Subsequently the term has become more well used. That's because more people are buying apps through the App Store, but also because more online stores are selling apps," says Chapman.

"The question therefore arises as to whether the term that may initially have been distinctive has become descriptive? For example (and perhaps ironically) 'Walkman' became the common term for personal stereo - to the extent that Sony lost it trade mark in some countries."

Conversely, terms which were once merely descriptive can accumulate specific associations through widespread commercial use. Gaming has several examples of this, not least of all the long running battle over the use of the word 'Edge' in association with anything gaming related thanks to the efforts of Tim Langdell.

"There are numerous examples in the games world," Chapman continues. "'Driver' and 'Modern Warfare' are examples of names that have developed a distinctive character of their own that make them protectable.

"A question therefore arises as to whether the use made of the 'App Store' mark by Apple enhances its distinctive character or whether the popularity of the phrase means that it has become a commonplace term for services of the kind provided under the mark."

However debatable the position on that determination may be, Chapman feels that Apple is certainly following the right course of action in its attempts to secure its rights to the phrase as trademark.

"The answer may ultimately be left to the courts to determine - but one thing is certain. Apple must assert its rights and challenge those that use its marks else it risks losing them - it must therefore challenge Amazon. If it doesn't the term will certainly pass into common vocabulary for all to use - which might not be a bad thing."