A Trademark War

A trademark is any word, name, symbol, or design or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.

Some companies try to register a general name as a trademark to ensure nobody in the market could use the same word anymore for the same area. I will take two examples to illustrate this fact.

The super massive company Apple who registered thousands of trademarks for all its products recently tried to register in front of the Australian trademark office the word ‘startup’. The California headquarters of the company wanted to register the name in four classes, including retail store services (class 35), maintenance, installation and repair of computers and device (class 37), educational services (class 41), as well as design and development of hardware and software (class 42).

In the United States, Apple already registered the trademark ‘startup’ on the 19th of April 2011. The U.S. Patent and Trademark Office challenges some points of Apple’s trademark. Apple had a period of time to answer these challenges. At the same time, they tried to register the trademark in Australia and their application was rejected. It is important to note that a registration accepted in Australia is very important for Apple’s company because contrary to the USA, Australia is a member of the Madrid System. Thanks to this System when one of your trademark is registered in one country, you can have an international extension in all countries which are part of it. Having an international trademark for Apple is of great value. Here, the question of distinctiveness is challenged. If Apple succeeded in the registration of this trademark, we can be concerned for the consequences. Some companies would necessarily be restricted from using this word while it is a common term. Does it mean a company can acquire the monopoly over the general term?

For all the details regarding the Apple application for the word ‘startup’, there is the World Intellectual Property Office (WIPO) which offers all elements: where the trademark is already registered, and which country refused. For each country, you can read the decision of the trademark office. You will notice that the trademark is already registered in the European Union.

The question of owning some general term appears to be real, the English company Pho Holding Limited, owner of Pho Vietnamese Cafes registered a trademark for the word ‘pho’, a Vietnamese dish and wanted to pursue a rival restaurant for using the word ‘pho’ in his name.

In this case however the problem appears to be legitimate. A trademark should serve as a protection for companies who created a new name but it should not be a protection for companies trying to own rights to general words.


An interesting Guardian article: The Vietnamese pho war – can you trademark a soup?

If you are interested to know how works classes when you register a trademark, here is an article from the US Patent and Trademark Office: Nice Agreement.