App Trademark Lawyer Explains Why App Trademarks Are Different
This article raises some of the esoteric issues with bringing App trademark lawsuits.
App and website design and development can be contentious generating a minefield of legal issues from breach of contract to intellectual property infringement, but none of this is new.
On the other side, we have represented developers suing for payment of the App design and development costs, arguing that failure to meet customer demands was down to poorly defined parameters by the client and a lack of customer understanding of the basic concepts of digital Apps, how they work and the underlying coding.
The Growth of Apps And The Increase In-App Trademark Infringement
A legal issue that continues to increase in prominence is that of App trademark infringement.
This increase in trademark infringement relating to Apps is significant because mobile Apps continue a trend of sharp growth in quality, popularity and profitability levels so the existing models and approaches to resolving App trademark infringment disputes can only become more flawed.
According to Statista.com, as of the first quarter of 2019, there were 2.1 million apps available for downloads on Android and almost 1.8 million apps on Apple’s App Store.
The next three best performing App stores of the first quarter of 2019, which are Windows, Blackberry and Amazon had an aggregate of approximately 1.4 million Apps available on all their platforms.
There were 77 billion Apps downloaded from Google Play in 2018 and 30 billion Apps downloaded from Apple IOS for the same period.
The Statista.com projections are that in 2023, consumers will download 124 billion mobile Apps from the Google Play app store alone.
The App revenue numbers are equally impressive. According to Sensor Tower store intelligence, mobile consumers generated revenue of an estimated $19.5 billion globally on the App Store and Google Play platforms alone during the first quarter of 2019.
Three Reasons Why App Trademarks Are Different
So, what are the three reasons why mobile app trademark disputes are different from other types of trademark disputes?
Mobile apps can be downloaded worldwide, allowing the app owner access to a global customer base. A borderless trademark world is at odds with general trademark law.
The rights given to a trademark owner in the UK can only be used to protect the use of the mark in the UK.
If the trademark is a community trademark, then the owner’s exclusive right to use the mark to distinguish his product or service extends to the whole of the European Community.
When bringing proceedings concerning trademark infringement of Apps, you need to consider where the defendant is resident.
You can sue the defendant in this country and serve them abroad (see Council regulation (ec) 44/2001 of 22 December 2000. For the law on the effects of a CTM see Community Trademark Regulations 2006 SI 2006/1027.
2. No App Name Registrar
No authority coordinates the assignment of App Names like the Internet Corporation for Assigned Name and Numbers (ICANN) does for domain names.
The Madrid Agreement and the Paris Convention for the Protection of Industrial Property (1883) allow for the protection of trademarks subject to the territory.
Different owners register the same marks in different states. The only exception is under section II Article 16 of the TRIPS Agreement which excludes well-known trademarks, i.e. Art16(2) says that Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services.
3. Different App Stores
Different platforms support App downloads, including Google Play; iOS App store; Windows Store; Amazon App Store; BlackBerry World. All these platforms have their policies on trademark infringement.
Amazon World has its Amazon Brand Registry; IOS App Store has a process that involves filling out a complaint form, so does Google Play.
None of these App platforms provides a universal remedy for removing Apps that infringe trademarks across all the other platforms, and they usually do not offer any satisfactory solutions in what is always a time-consuming and challenging process.
App Stores And Trademark Competition
App Stores are well suited to the concept of trademarks. The fundamental purpose of a brand is to identify the origin of a product/service as being from a specific enterprise so that there can be no doubt in the mind of the consumer to distinguish that undertakings goods/service from that of its competitor’s goods/services see Canon. Additionally, to protect the mark from other’s taking unfair advantage of its excellent reputation or causing adverse inferences to damage its reputation even where there is no confusion see L’Oréal.
App stores are incredibly competitive marketplaces with thousands of competitive apps providing the same or very similar product/service distinguishable only by the name or logo.
Search for an App is done by their names. The highly competitive marketplace that is an App Store lends itself well to the legal protection that trademarks offer. Most App businesses today are simply copying other companies and then adding a slight difference of their own. Businesses see one App is a success; then they do the same thing trying to cash in on that other App’s success.
Competing Apps are becoming more and more alike. In this kind of marketplace, if you create something unique and find a niche, you will be immediately copied by other companies wanting to piggyback off your success and attract your customers. Once your competitors launch, they will try to claim that their product/service is better than yours in some standard way. In this environment, trademarks are essential because if you can be first to launch with the right brand, copycats will not fool the customer. You will also be able to stop any competitors that want to copy or damage your brand.
While there are challenges with the territory concerning trademark owners enforcing their rights against infringing Apps, we have been able to overcome these challenges and have brought trademark infrngment claims against defendants domiciled in the following jurisdcitions UK, France, Spain, Holland, Ireland, Germany, USA, Switzerland, Sweden, Norway, Finland, China, Singapore, Nigeria, South Africa, Lithuania, Romania, Russia, Belgium, and United Aram Emirates. Defendants are not necessarily able to avoid a claim simply because they are outside the trademark owner’s territory.
This article deals with Apps Mobile Apps and Trademarks legal issues.
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