Strong trademarks make the difference: Apple stops APstore

We all know Apple’s digital marketplace for apps: the App Store. The name now sits alongside iPhone, iPad, MacBook and iMac.

APP STORE is registered as a trademark, including for online retail services relating to computer software and applications. And although ‘app’ and ‘store’ are hardly imaginative words in themselves, years of extensive use have given the combination a very strong position.

Chinese company Yuneng Technology discovered just how strong when it sought to register the mark APstore in the European Union. The application covered, among other things, advertising services and services relating to extended warranties and purchase protection. Apple objected and submitted a substantial body of evidence, ranging from figures showing hundreds of billions of downloads and hundreds of millions of weekly visitors to articles published by Forbes, Reuters, the BBC and The New York Times. Apple referred, for example, to a 2012 Forbes article describing the company as the most valuable company in history. For the European Union Intellectual Property Office (EUIPO), the strong reputation of APP STORE was therefore convincingly established.

From there, the step to refusing APstore was relatively small. The names differ only slightly: one letter less and no space. The EUIPO found the marks highly similar visually and conceptually, and even potentially identical phonetically. Yuneng’s services were not the same as Apple’s core activities, but that ultimately mattered little in this case. Given the reputation of APP STORE, the EUIPO considered it likely that consumers encountering APstore would immediately think of Apple and that Yuneng would thereby benefit from the attraction and commercial value of the earlier mark.

Those who invest over many years in registration, use and reputation build not only recognition, but also legal strength. Reputation must be established afresh in each case, but Apple now has an extensive body of evidence, including usage figures, market data and independent publications, with which it can substantiate that reputation relatively convincingly. Combined with the strong similarity between APP STORE and APstore, that was more than sufficient here to block the application.

Author: Arnaud Bos

Bio: Arnaud is trademark attorney and within Knijff responsible for the marketing & communication. Arnaud is specialist in the metaverse and music sectors and his client portfolio includes many upcoming and renowned bands. He keeps a close eye on the latest case law in the EU and will let you know when he sees remarkable applications.