Introduction
With the rise of the smart phone and tablet, the development of an ‘app’ or ‘application software’ has become a key element in any business, alongside the obligatory Facebook and Twitter accounts. An app is software developed specifically for mobile devices which may have a variety of functions, including games, financial services, interactive maps, advice and product catalogues. Increasingly, apps are being used by brand owners to increase consumer accessibility to the goods and services they offer, or to expand and supplement their more traditional goods and services.
The question for brand owners is, what are the trade mark issues involved in using a brand in relation to an app?
In Australia, there are a few simple steps that can be taken to ensure your apps do not cause un-anticipated issues for your business.
Are you using your app name or logo as a trade mark, and if so, for what goods and services?
Just because you are offering your app for free does not mean it is free from risk The distribution of goods or services free of charge may not involve trade in those goods or services. This means that an app name used in relation to a free app may not constitute use as a trade mark under Australia’s Trade Marks Act 1995 (Cth). However, this will be a question of the facts surrounding your particular use. In most cases some financial reward is involved in the development and distribution of the app. Therefore, the mere fact that there is no charge for the app itself does not indicate there is no trade mark use. This also would not prevent other misleading conduct or Consumer Law breaches arising. Therefore, the mere fact that an app is free does not mean that there are no risks associated with its launch.
What goods or services does your app provide?
If you are charging for the goods or services associated with your app, the chances are, the use is in the course of trade and will constitute trade mark use. Some apps will offer services which have been in long use by a business, such as an app provided by a bank (often for free) to simply access its financial services via the internet. In these circumstances, the app icon or logo may constitute use of the trade mark in relation to financial services. However, other cases will exist where the app creates a new good or service not previously offered by a trader as many apps do increasingly provide an expanded array of mobile services. An example may be where a publisher begins offering its publications (previously available in traditional print only) through any app. This can create a whole new area of goods (downloadable publications) or services (non-downloadable software) for that trader. As apps evolve, it is increasingly the case that they are creating a new market for the trader involved. Careful review is required to ensure you can identify the goods or services offered, from a trade mark perspective, by your app. This is the first step to ensuring your use does not incur new risks to your business.
Have you developed new logos or trademarks in association with your app?
Traders often develop new logos (in the form of the app icon) and names for their apps. These can be derived from their traditional marks, or be newly coined for the app use. It is important to be clear how the app will be identified graphically, that is, the app icon or logo, and by name. These identified trade marks must then be analysed together with the goods and services identified, and if new uses occur, you should ensure trade mark clearance searches are undertaken prior to using to avoid any infringement risks. Determining whether further clearance searches or protection are required for the app logo and name Once you have determined the goods and services offered by your app, it is important to check whether your app uses: a new trade mark; or a trade mark previously in use for new goods or services. If either of these situations apply, it is important to ensure you clear the particular app name or logo in relation to the goods and services identified. This is to avoid infringing any third party trade mark rights. Once any app trademarks are cleared for use, consideration should be given to protecting the app name or icon through registration. If the trademarks are ones which you are likely to want to prevent other traders from using, then seeking registered protection is advisable.
Monitoring use of your brands online
Australia has one of the highest penetration rates for smart phones and tablets in the world, and in this environment it is essential to ensure that brand protection is not neglected. A final step is clearing, using and protecting your app brands is a strategy to monitor your names and logos for infringing use. Any good watching strategy in today’s digital world should include a strategy for reviewing online use by third parties across domain names, social media and in app stores.
The legal update was authored by Georgina Hey (georgina.hey@nortonrosefulbright.com / +61 2 9330 8210) of Norton Rose Fulbright Australia’s Intellectual property group.
