Apps are the new black. Everyone has them. ‘Apps’ is the commonly used shortened form for ‘Application software’ or ‘applications’. Application software is computer software designed to help perform a singular, or multiple related, specific tasks. Apps are therefore software developed for a specific task or tasks.
The Apps we are referring to are software developed by brand owners to increase consumer accessibility to their goods and services by portable telecommunications devices. Brand owners offer the software to consumers under their trade mark, often at minimal or no cost, generally through online ‘Apps’ stores. Once a consumer has purchased or downloaded an App to their mobile phone or other device, the application software allows them to review products, do their banking, read the relevant media, obtain information or do any number of other things the specific App was designed for.
Apps for new movies are often available well before the movie hits the cinema, as was the case for Toy Story 3 and Eclipse. There are Apps for your favourite paper or magazine so you can do some reading while you are on the go. Chances are your bank has an App (the Big 4 in Australia do), as well as your favourite retail stores, clothing brands, television show and your favourite footy code. Even your car probably has an App. These Apps are all easily accessible through iTunes or similar websites and are offered under the trade marks of the brand owners.
The question is, are brand owners protecting their trade marks when they are being used for downloadable software in this manner? A review of the Australian Trade Marks Office records suggests they are not.
Trade marks which are used for downloadable software or application software should be registered in Class 9 specifying these goods. Software can be classified a number of ways under the trade mark classification system. The invention of software, and indeed the internet and telecommunications as we know them, came about well after the Nice classification of goods and services (which is used as an administrative tool to classify trade mark applications and registrations around the world) was compiled. As a result, from a trade mark protection perspective, it has been necessary to make new items, such as software, fit into a classification system which could not have contemplated such items. Therefore, software and associated items are not clearly classified in one class for the purposes of obtaining trade mark protection. For example, the following classifications should be considered when moving your brand into the electronic and digital spheres:
- Class 9: Software/computer software
- Class 38: Electronic transmission of information
- Class 41: Providing online electronic publications (not downloadable); Internet games (non-downloadable)
If you are expanding use of your brands into the digital world, or are developing branded Apps, you should review the protection you have in place for your trade marks to ensure you have adequate protection in place. Just as importantly, as with any brand expansion, trade mark owners are well advised to ensure expanding their trade mark use will not conflict with third party trader rights already existing in the market.
If you would like to discuss your overall brand protection further please contact a member of our Trade Marks team.
This article was written by Georgina Hey, Senior Associate, Sydney.
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