This analysis provides an in-depth examination of Apple Inc.’s strategic efforts to secure and maintain the trademark registration for “APP STORE” within the context of Canadian Intellectual Property Law. For this purpose, I have reviewed all documents available in the Canadian Trademarks Database related to this word trademark.
I found that Apple Inc., currently owns the word trademark “APP STORE” for services in classes 35, 37, 38 and 42 associated with Application No. 1495970 (Registration No. TMA932842). This registration primarily covers “retail store services featuring computer software provided via the Internet and other computer and electronic communication networks; retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics…”
However, the journey to secure the registration for the APP STORE trademark was anything but smooth. The Canadian Intellectual Property Office (CIPO) initially flagged concerns, by issuing an examiner’s report for this classes 35, 37, 38 and 42 on the grounds that the trademark APP STORE was deemed to be clearly descriptive or deceptively misdescriptive of the proposed services, in line with paragraph 12(1)(b) of the Trademarks Act.
Initially, Apple Inc.’s response to the examiner’s report, which argued that “APP” is merely an informal or slang term for “application,” did not suffice to overcome CIPO’s objections. CIPO stated that the use of informal or slang terms does not exempt a word or term from being considered descriptive under paragraph 12(1)(b). This stance is supported by the belief that the average consumer, upon encountering Apple Inc.’s trademark in connection with the respective services, would immediately and plainly understand that “APP” stands for computer application, as highlighted in Drackett Co. of Canada Ltd. v American Home Products Corp. (1968), 55 C.P.R. 29 (Ex. Ct.) at p. 34.
CIPO also upheld its objection based on the definition from the New Oxford American Dictionary (3rd edition), which describes “APP” as a “computing application, especially when downloaded by a user to a mobile device.” Despite Apple Inc.’s argument that “APP” is an abbreviation or acronym that could signify multiple potential meanings, CIPO stated that the average consumer would interpret the trademark “APP STORE” associated with the specified services to mean “retail store services featuring computer software applications,” as outlined in Imperial Tobacco Ltd. v. Benson & Hedges (Canada) Inc. (1983), C.P.R. (2d) 115 at page 117.
In addressing Apple Inc.’s argument about the existence of other trademarks containing the word “STORE,” aside from TMA505514 THE CONTAINER STORE whose registrability was acknowledged based on the evidence on file, CIPO stood firm, highlighting that these trademarks could not be compared to Apple Inc.’s situation since they were not registered for services and did not include descriptions of the items for sale in association with the word “STORE.”
Moreover, CIPO dismissed Apple Inc.’s claims about the “APP STORE” trademark’s approval for publication in the United States, emphasizing that CIPO is under no obligation to follow decisions made under foreign law and procedures distinct from the Canadian Trademark Act.
As a result, the initial objection under paragraph 12(1)(b) of the Trademarks Act was maintained. However, a significant shift occurred on May 28, 2015, when the objection was withdrawn after Apple Inc., provided evidence, demonstrating that the APP STORE trademark had acquired distinctiveness within Canada in relation to the applicant’s services, pursuant to paragraph 12(3) of the Trademarks Act. This provision states that a trademark is registrable, if it has become distinctive by the application filing date (September 15, 2010). To establish the trademark’s distinctiveness, CIPO specifically requested Apple Inc., to submit:
a) Samples of the trademark’s use in Canada between 2008 and 2010 in connection with each associated service.
b) Revenue figures for each service provided/sold in Canada, categorized by year and geographical area (provinces), including total annual revenue, sales per province and territory, and the revenue percentage represented by each province and territory. Notably, revenue figures for British Columbia, Ontario, and Quebec were to be reported individually, not aggregated with other provinces.
c) Total advertising expenditures for the services under the trademark in Canada, and
d) The numerical and geographical distribution and types of media where the advertisements were placed.
Adding another layer to Apple Inc.’s trademark portfolio are two additional registered trademarks for “APP STORE” that protect goods in class 09 related to “computer software,” specifically Registration No. TMA857599 (Application No. 1521558) and Registration No. TMA1010060 (Application No. 1520937).
Notably, only the registration corresponding to Application No. 1521558 (Reg. No. TMA857599), in class 09 briefly encountered opposition from industry giants Nokia and Amazon, which was subsequently resolved as they withdrew their opposition.
In my opinion, Apple, Inc., should not have had to navigate such a challenging journey to obtain the registration of its APP STORE trademark for services in classes 35, 37, 38, and 42. This situation could have been avoided, if the examiner’s report had properly analyzed the trademark’s potential descriptiveness or deceptive misdescriptiveness in relation to the intended services. The analysis should have considered the trademark as a whole, taking into account the consumer’s first impression, rather than dissecting it into its distinct elements, since the assessment should be from the perspective of the ordinary purchaser. This approach aligns with the following cases:
In Battle Pharmaceuticals v. The British Drug Houses Ltd., (1944) Ex. C.R. 239, Thorson J. stated on page 60: “It is the combination of the elements that constitutes the trade mark and gives distinctiveness to it, and it is the effect of the trade mark as a whole, rather than of any particular element in it, that must be considered.”
Similarly, in Wool Bureau of Canada Ltd. v. Registrar of Trade Marks (1978), 40 C.P.R. (2d) 25, Collier J. remarked on page 27: “The decision that a mark is clearly descriptive is one of immediate impression; it must not be based on research into the meaning of words.”
Communications Law
Hello Beatriz, I 100% agree with your opinion that the analysis was mishandled and that the name “APP STORE” should have been taken as one instead of splitting the two words apart during the application process. It seems to me as if the review had lost focus on the goal of viewing the issue mainly through the consumer’s lens. Although I can see the review board’s concern about allowing such a broad name “APP STORE” to be trademarked, I believe Apple had a legitimate argument that the word “APP” did not necessarily mean an application downloaded onto a phone in the public’s mind until Apple themselves popularized it with “APP STORE”. Regardless, this was a great post and summary of Apple’s journey. Thank you!