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Apple has started asserting its rights to the word ‘pad’ over those using the term in conjunction with applications for the iTunes App Store. Apple is requesting app developers to remove the word ‘pad’ from the name of the app.
Apple does not currently own a trade mark over the word ‘pad’, although it has trade marked ‘iPad’ and ‘MacPad’. Should it seek to register ‘pad’ as a trade mark in Australia, Apple could encounter some challenges. Here, words can only be registered as trade marks if they are used, or intended to be used, to distinguish goods or services from others in the market. Descriptive terms are usually incapable of being registered on the grounds that they do not distinguish the product from other products. Descriptive terms may only be registered if, due to the extent of their use and other factors, they do or will distinguish the relevant product (think ‘pink batts’ for pink insulation batts).
Generally speaking, Apple’s assertive conduct can be explained on the basis that Apple products have become so popular, and its imitators so common, that Apple faces the risk that its trade marks could be susceptible to ‘genericide’ if it fails to assert control over its branding. Genericide occurs when a particularly successful brand becomes synonymous with a type of product (think Kleenex in relation to tissues), thereby making the trade mark susceptible to being struck off the register.
Without commenting further on the likely success of a trade mark application, the situation serves as a reminder to all brand owners to focus not just on the commercial success of a product, but also on their overall brand protection strategy.
