Apple Inc. v. Amazon.Com, Inc.

Filing 44

EXHIBITS re 39 Declaration in Support, Continuation of Exhibits filed byAmazon Digital Services, Inc., Amazon.Com, Inc.. (Attachments: # 1 Exhibit 28, # 2 Exhibit 29, # 3 Exhibit 30a, # 4 Exhibit 30b, # 5 Exhibit 31, # 6 Exhibit 32a, # 7 Exhibit 32b)(Related document(s) 39 ) (Givan, Sarah) (Filed on 6/1/2011)

12. MAG, 2011 18:41

STL JEA 011859804

NR. 799

P. 10—

J AcinA cr

AVVOCATI • AVOCAT5 A LA COUR

Nullità ai sensi dell'Art. 7(1)(d)
191 11 tennine "APP STORE" e di uso comune nel commercio per designare uno negozio
(anche Un punto vendita virtuale) dove i software applicativi ed i servizi correlati possono
essere acquistati, Oh Allegati 6, 7, 8 e 9 dimostrano una larga varietà di usi del termine
"APP STORE" per identificare quei servizi originati da una gamma di differenti aziende.
L'Allegato 6 si riferisce all'uso del termine "APP STORE" in italiano, l'Allegato 7 in
francese, PAllegato 8 in inglese e l'Allegato 9 in spagnolo. E' pertanto chiaro che "APP
STORE" 6 largamente utilizzato come un termine comune nel commercio nelle lingue
sopra indicate, Cosi come in tutte le lingue dell'Unione Europea, per descrivere i servizi per
quali ii marchio comunitario in parola ê stato registrato. Le ingenti prove, delle quali solo
alcuni estratti sono stati depositati sub-allegati 6, 7, 8 e 9 6 tale da confennare con assoluta
certezza che l'espressione "APP STORE" 6 incapace di identificare i servizi forniti da
un'impresa fra le mofte che sono attive nel settore di riferitnento, proprio perché ii
medesimo termine 6 usato nel commercio e dalla stampa in rein:tone a stores di software
applicativi che sono uti1i77Ati da nunterose società. IN particolare si attira 1' attenzione sul
fatto che altri numerosi operatori del settore utilizzano questa espressione nell'ambito del
name del loro punto vendita in modo generico:
AppStoreT3Q
Amazon App Store
App store blackberry
Shopify App Store
@metro App Store
WinMoAppStore.cont
AndAppStore
DirectTV App Store

STORE comme designant 70i endroit oiz a lieu la verde de eafë, ou la eonsononation de ee produit ou de produits
qui lui sant generalement associes_
C'est donc er bon droit que la chambre de recoies a oonsideré vie le signe THE COFFEE STORE &cat conslitue
exclusivement d'indioations pouvara servir b designer la nature des prodaits et la destination desserviceS relevant
des classes 30, 32 et 43 s T-323/05, paragrafi 42 aad 43

Page 667

12. MAG. 2011 18:41

J

NR. 799— P. 11

STL JEA 011859804

&BACCI
AVVOCAT1 • AVOCATS A LA COLR

- Sentrion App Store
- MobiHand App Store
- Mobile App Store Solutions
MARI ai sensi dell'art. 7(1)(g)
[101 Sebbene "APP STORE" sia generico o descrittivo per un luogo dove possono essere
acquistati software applicativi, marchio è stato altresi registrato per

"Assistenza,

riparazione e aggiornamento di software per computer" nella classe 37 e "Manutenzione,
riparazione ed aggiornamento di [....Isoftware per sistemi operativi computerizzati,
software di servizio" nella classe 42. Tuttavia, il software applicativo e cbiaramente diverso
dal software di sistema operativo (o software di sistema tout court). La registrazione e l'uso
di "APP STORE" per contraddistinguere servizi connessi con l'assistenza e la riparazione e
Paggiornamento di software diversi dal software applicativi è fonte di confusione per il
pubblico circa la natura e la qualità dei prodotti per i quail i servizi di riparazione,
assistenza e aggiornamento sono forniti.
Conclusioni
Eli] Le ,Ricorrenti richiedono la dichiarazione di nullità assoluta del marchio comunitario
n, 007078314 in relazione a tutti i servizi per i quali è registrato ai sensi e per gli effetti
dell'Art. 85(1) e, ai sensi della Rule 94 del Regolamento della Commissione (EC) n.
2868/95 di esecuzione del RMC (IR"), le Ricorrenti richiedono la vittoria delle spese e dei
costi.

Con osservanza in nome e per conto di
Microsoft Corporation, Sony Ericsson Mobile Communi tions, HTC Corporation

o Jacobacci

9

Page 668

From: BarzanO & Zanardo

To: 0034965131344

Page: 5/64

Date: 12/05/2011 16.41.31

BARZANO & ZANARDO

Invalidity Application by Nokia Corporation against Community Trade
Mark Registration No. 007078314 APP STORE in the name of Apple Inc.
In the name and on behalf of Nokia Corporation (hereinafter, for ease of
reference, referred to as "Nokia" or "the Applicant"), we hereby respectfully
submit a request for a Declaration of Invalidity against Community Trade Mark
Registration No. 007078314 APP STORE in the name of Apple Inc (hereinafter
also referred to as "the CTM Registration").
The Community Trademark Registration
The above Community trademark which was filed at the Office on July 21, 2008
(claiming priority of Trinidad and Tobago application no. 39582, filed on March .
7, 2(108) matured to registration on June 5, 2009 for the following services in
International classes 35, 37, 38 and 42:
Retail store services featuring computer software provided via the Internet and
other computer and electronic communication networks; retail store services
featuring computer software for use on handheld mobile digital electronic devices
and other consumer electronics; internet services, namely, creating indexes of
information, sites and other resources available on global computer networks for
others; searching, browsing and retrieving information, sites, and other resources
available on global computer networks and other communication networks for
others (class 351.
Maintenance, repair and updating of computer software and of handheld mobile
digital electronic devices and other consumer electronics, namely, MP3 players,
hand held computers, personal digital assistants, electronic organisers, electronic
notepads, magnetic data carriers, mobile digital electronic devices, computers,
notebook computers, computer hardware, computer peripherals, computer
batteries, remote controls, disk drives, power cords, power converters, hard drives
for computers, video cameras, speakers for computers, microprocessors, computer
memory boards, keyboards, computer servers, computer docking stations,
computer terminals, printers, cellular telephones, electronic games, video game
machines, consoles for use with computers, electronic games consoles, video and
computer game software and programs, set top boxes, video projectors, radios,
microphones, headphones, earphones, tuners, automatic vending machines, fax
machines, scanners, computer displays and monitors, touch screens, computer
mice, trackballs, track pads, light pens, joysticks, game controllers, graphic
tablets, digitisers, cables and connectors, flash memory drives, network
interfaces, modems, cable modems, routers, bridges, gateways, and hubs,
wireless routers, cards, and access points, telephones, personal digital assistants,
video recorders, televisions, stereo receivers, video disc players, audio disc
players, digital audio players and recorders, audio amplifiers, music
synthesisers, video special effects generators, still cameras, digital cameras,
-3-

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BARZANO & ZANARDO

semiconductors, integrated circuits, video game cartridges, magnetic disc and
optical discs (class 37).
Communications services; telecommunication services; electronic transmission of
computer software via the internet and other computer and electronic
communication networks; provision of connectivity services and access to
electronic communications networks for transmission or reception of computer
software; provision of on-line communications services; communications via a
global computer network or the Internet; electronic mail, message sending and
receiving services; broadcasting services; provision of access to web pages;
transmission and distribution of data or audio-visual images via a global
computer network of the Internet; providing access to MP3 websites on the
Internet; delivery of digital music by telecommunications; providing access to
digital music websites on the Internet; leasing time to a computer database;
information, advisory and consultancy services relating to all the aforesaid (class
38).
Maintenance, repair and updating of computer software, computer operating
system software, computer utility software; providing information concerning
computer software via the internet and other computer and electronic
communication networks; providing consulting services and technical
troubleshooting support for computer software and for handheld mobile digital
electronic devices and other consumer electronics; providing search engines for
obtaining data via communications networks; providing temporary use of
computer software and online facilities to enable users to access and download
computer software; computer hardware and software consulting services; rental
of computer hardware and software apparatus and equipment; multimedia and
audio-visual software consulting services; computer programming; support and
consultation services for developing computer systems and databases; graphic
design for the compilation of web pages on the Internet; information relating to
computer hardware or software provided on7line from a global computer network
or the Internet; creating and maintaining web-sites; design and development of
web-sites featuring multimedia materials; hostiv the web-sites of others;
information, advisory and consultancy services relating to all the aforesaid(class

42).

The Grounds on which the Invalidity action is based
Invalidity of the above registration is hereby sought, on the basis of Articles
52(1)(a) and 7 of Council Regulation (EC) No. 207/2009 of 26 February 2009

(hereinafter referred to as the "Community Trademark Regulation" or "the
CTMR").

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Date: 12/05/2011 16.41.32

BARZANO & ZANARDO

In this respect, Article 52(1)(a) CTMR, Absolute Grounds for Invalidity'
provides that:
"1. A Community trade mark shall be declared invalid on application to the
Office or on the basis of a counterclaim in infringement proceedings:

(a) where the Community trade mark has been registered contrary to the
provisions of Article 7".

Article 7 CTMR, 'Absolute Grounds for RefusaP provides, inter alia, that:
"1. The following shall not be registered:
[amissis]
(b )

trademarks which are devoid of any distinctive character;

trademarks which consist exclusively of signs or indications which may
(c)
serve, in trade, to designate the kind, quality, quantity, intended purpose, value,
geographical origin or the time of production of the goods or of rendering of the
service, or other characteristics of the goods or services; •
(d)
trademarks which consist exclusively of signs or indications which have
become customary in the current language or in the bona fide and established
practices of the trade";
[ornissis]
(g) trademarks which are of such a nature as to deceive the public, for instance
as to the nature, quality or geographical origin of the goods or service;

It is on the basis of the combined provisions of the articles cited above that
invalidity of the CTM registration is hereby sought.

Facts, arzuments and evidence in support of the Invalidity Action

The Community Trademark Registration consists merely of the term APP
STORE which:
- is devoid of distinctive character within the meaning of article 7(1) (b)
CTMR;

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EARZANO & ZANARDO

consists exclusively of a sign or indication which serves, in trade, to
designate the kind or intended purpose of the services, or other
characteristics of the services for which protection has been claimed in
classes 35, 38, 39 and 42, within the meaning of article 7(1) (c) CTMR;
has become customary in the current language or in the bona tide and
established practices of the relevant trade circle within the meaning of
article 7(1) (d) CTMR;
is of such a nature as to deceive the public as to the nature of certain
services for which the mark has been registered within the meaning of
article 7(1) (g) CTMR.
For the sake of analysis, we shall examine the constituent elements of the mark
in turn before considering the mark as a whole.
The word APP

It is worth recalling from the outset that the descriptive character of a mark, or
one of its constituent elements, must be assessed in relation to the
goods/services for which the mark was registered.
In the context of the services covered by the CTM registration, the word APP is
exclusively descriptive of application software, as attested, amongst others,
by the relative entry on the "Free Dictionary by Farlex" which is available
online at http://www.thefreedictionary.com/app (Attachment 1).
Use of the abbreviated term APP to denote Application software dates back to
the 1980s when it was commonplace for companies in the Information and
Communications Technology (ICT) industry to invest, heavily in research and
development activities in search of the so-called "killer app". In support of the
above claim we hereby submit:
Attachment 2 which is an extract from the September 18, 1989 edition of Info

World and contains a reference to the term "killer app";
Attachment 3 which is a screenshot from the Cambridge dictionary's online
entry for "Killer App" (http://dictionary.cambridge.org/dictionary/british/killer-

Au);
Attachment 4 which is a print out from the WIKTPEDTAR entry for Killer app

which traces the use of the term "killer app" since the 1970s.

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BARZANO & ZANARDO•

Attachment 5 which is a print out from Dictionary.com's entry for "app" which
indicates that the word has been used since the 1985-1990 period.

Attachment 6 which is a print out from the WIKIPEDIA® entry for
Application Software littu://en.wikipedia.org/wiki/Auplication software
Thus, regardless of the significance of the word "app" in a general context, and
without prejudice to our comments below on the potential deceptiveness of the
mark, we are of the opinion that in the context of the services claimed in the
CTM registration, the word app is exclusively descriptive (if not generic) of
application software.
Moreover, whilst article 7 121 of the CTMR provides that absolute grounds for
refusal "shall apply notwithstanding that the grounds of non-registrability
obtain in only one part of the Community" we are of the opinion that, in the
present case, the grounds of non-registrability apply in most, if not all, parts of
the Community in view of the global tendency in the ICT sector to usc original
English language terms and not translate the same into local equivalents. In
any case, given the Latin origin of the word "application", in many European
jurisdictions the word is very similar or identical to the English term (e.g.
applicazione in Italian, application in French, aplicacidn in Spanish).
hi support of the above, we hereby submit:

Attachment 7 which is a screenshot from the website of the CTM
Registration's owner in which descriptive/generic use is made of the word app in
the Italian language (with English translation of relevant parts);

Attachment 8 which is a screenshot from the website of the CTM
Registration's owner in which descriptive/generic use is made of the word app in
the French language (with English translation of relevant parts);

Attachment 9 which is a screenshot from the website of the CTM
Registration's owner in which descriptive/generic use is made of the word app in
the Spanish language (with English translation of relevant parts);
Thus, considered per se, the term APP falls foul of the provisions of articles 7 (1)
(b) and (c) of the CTMR.

The word STORE

The term STORE traditionally referred to a shop where goods and services were
retailed and provided and/or where repair and maintenance services were
provided. Nowadays, it retains the above meaning and additionally, in the
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From: BarzanO & Zanardo

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Date: 12/05/2011 16.41.33

BARZANO & ZANARDO

online world, has been employed to designate the same scenario (a platform
where goods and services are retailed and provided and/or where repair and
maintenance services are provided in the virtual marketplace).
IL is therefore devoid of distinctive capacity in relation Lo the provision of the
services covered by the CTM registration.
In support of our assertion, we hereby submit:

Attachment 10 which is a print out (first page only) from the WIKIPEDIA®
entry for Online Store (redirect to Online Shopping)
By way of confirmation of our argument on Lhe lack of distinctive capacity of the
word STORE, we note that this word appears in the claim of services in class 35
of the CTM registration, which is the object of the present proceedings, also in
its virtual / online meaning:
Retail store services featuring computer software provided via the Internet
and other computer and electronic communication networks; retail store
services featuring computer software for use on handheld mobile digital
electronic devices and other consumer electronics;

Moreover, once again recalling the principle that that the descriptive character
of a mark, or one of its constituent elements, must be assessed in relation to the
goods/services for which the mark was registered, we note that in the context of
the services covered by the CTM registration, the word STORE has a second

meaning, namely that of a repository where data is stored; in other words, a
data store.
Data storage can refer to: computer data storage; memory, components, devices
and media that retain digital computer data used for computing for some
interval of time; or any data storage device that records (stores) or retrieves
(reads) information (data) from any medium, including the medium itself
(source: http://en.wikipedia.org/wiki/Data storage).
Application storage (in an app store), is a feature of many of the services
covered by the CTM registration and is, per se, a telecommunications service.

Therefore, the word STORE, considered per se, also falls foul of the provisions of
articles 7 (1) (b) and (c) of Lhe CTMR in respect of all of the services covered by
the CTM registration as it refers to both the online point of sale where apps are
retailed and/or stored.

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Date 12/05/2011 16.41.33

BARZANO & ZANARDO

The combination of APP and STORE
Tn view of the above observations and arguments, it would appear that the
applicant's intention in registering the mark APP STORE is that of asserting
exclusive rights over the combination of the terms APP and STORE. However,
we are of the opinion that this particular combination falls short of conferring
distinctive capacity on the mark as a whole in the context of the services for
which registration has been granted.
From the case law of the European Court of Justice it has emerged that, as a
general rule, a mere combination of elements, each of which is descriptive of
characteristics of the goods or services in respect of which registration is sought,
itself remains descriptive of those characteristics for Lhe purposes of Article
'7(1)(c) of Regulation 40194.
By way of mere example, in Case T- 160/07 (Landime parfums et beauté & Cie
SNC v OIIIM), the Court held that "a trade mark composed of elements, each of
which is descriptive of characteristics of the goods or services in respect of which
registration is sought, is itself descriptive of the characteristics of those goods or
services for the purposes of Article 7(1)(0 of Regulation No 40194, unless there is
a perceptible difference between the mark applied for and the mere sum of its
parts. That assumes that, because of the unusual nature of the combination in
relation to the goods or services, the mark applied for creates an impression
which is sufficiently far removed from that produced by the mere combination of
meanings lent by the elements of which it is composed (the earlier case of
PAPERLAE - Case T- 19/04 Metso Paper Automation v OHIM [2005] ECR
II- 2383 was cited in support of this finding).
The sum of the parts of the CTM registration (APP and STORE) is not of an
unusual nature in relation to the services covered by the CTM registration; as a
matter of fact, with reference to the above observations and attachments, it
would appear that quite the opposite is true and that "app store" is a term
which has become customary in the current language or in the bona fide and
established practices of the relevant trade circle.
hi other words, an APP STORE is (as its intrinsic meaning suggests) a store
(including an online store) where apps are offered for sale and can be acquired
by customers and where services related to the buying, selling and use of apps
(such as maintenance, repair and updating services) are provided and acquired
by customers.
The abbreviation of the word APPLICATION to APP is insufficient to create an
impression which is sufficiently far removed from that produced by the mere
combination of meanings lent by the elements of which the mark is composed
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Date: 12/05/2011 16.41.34

BARZAND & ZANARDO

since, as illustrated above, APP and APPLICATION are interchangeable as the
generic term for application software.
Moreover, no unusual juxtaposition of elements has Laken place: Lhe mark has
been Ibrmed in accordance with normal lexical and grammaLical rules of the
English language.
Without prejudice to our comments below on thc potential deceptiveness of the
mark APP STORE in relation to some services of the CTM registration, the
mark is exclusively descriptive and devoid of distinctive capacity in relation to
the services covered because:
retail store services featuring computer software provided via the internet and
other computer and electronic communication networks is the core business of all
app store;
retail store services featuring computer software for use on. handheld mobile
digital electronic devices and other consumer electronics is the core business of
an app store;
internet services, namely, creating indexes of information, sites and other
resources available on global 'computer networks for others are services which
are typically available in an app store or which are essential characteristics of
the apps which are provided in such a store.,
searching, browsing and retrieving information, sites, and other resources
available on global computer networks and other communication networks for
others are services which are typically available in an app store or which are an
essential characteristic of the apps which are provided in such a store:
Maintenance, repair and updating of computer software and of handheld mobile
digital electronic devices and other consumer electronics are services which are
typically available in an app store or are essential characteristics of the apps
which are provided in such a store:
Communications services and telecommunication services is the core business of
an app- store;
electronic transmission of computer software uia the internet and other computer
and electronic communication networks; provision of connectivity services and
access to electronic communications networks for transmission or reception of
computer software; provision of on-line communications services;
communications via a global computer network or the Internet is the cnre
business of an app store;

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Date: 12/05/2011 16.41.34

BARZAN6 & ZANARLO

electronic mail, message sending and receiving services are services which are
typically available in an app store or are essential characteristics of apps which
are provided in such a store:
broadcasting services; provision of access to web pages; transmission and
distribution of data or audio-visual images via a global computer network of the
Internet; providing access to MP3 websites on. the Internet; delivery of digital
music by telecommunications; providing access to digital music websites on the
Internet; leasing time to a computer database; information, advisory and
consultancy services relating to all the aforesaid are services which either fall
within the core business of an app store or are anyhow typically available in an
app store or are essential features of the apps that are acquired therein;
Maintenance, repair and updating of computer software, computer operating
system software, computer utility software are services which consumers might
reasonably expect to find in an app store, without prejudice to our comments
below on the potential deceptiveness of the mark in the context of software
other than application software.
providing information concerning computer software via the internet and other
computer and electronic communication networks; providing consulting services
and technical troubleshooting support for computer software and for handheld
mobile digital electronic devices and other consumer electronics; providing
search engines for obtaining data via communications networks; providing
temporau use of computer software and online facilities to enable users to access
and download computer software; computer hardware and software consulting
services; rental of computer hardware and software apparatus and equipment;
multimedia and audio-visual software consulting services; computer
programming; support and consultation services for developing computer
systems ,and databases; graphic design for the compilation of web pages on the
Internet; information relating to computer hardware or software provided on-line
from a global computer network or the Internet; creating and maintaining websites; design and development of web-sites featuring multimedia materials;
hosting the web-sites of others; information, advisory and consultancy services
relating to all the aforesaid are the core business of an app store, or services
which are typically available in an app store or which are ,an essential
characteristic of the apps which are provided in such a store;

Thus, even the combination of the elements APP and STORE falls foul of the
provisions, not only of articles 7 (1) (b) and (c) of Lhe CTMR buL also of article
7(1)(d) insofar as Lhe term APP STORE has become customary in Lhe current
language or in the bona fide and established practices of the relevant trade
circle within the meaning of article 7(1) (d) CTMR.

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BARZAN6 & ZANARDO

In support of the above argument, we 'hereby submit Attachment 11 which
shows use of the term "app store" by diverse operators in the ICT field in the
context of the services which have been claimed in the CTM registration. In the
online marketplace for apps, it is necessarily the "house mark" which consumers
will rely upon to distinguish one app store from another such as Lhe "Amazon
app store" from the "App Store HQ" and the "Blackberry App Store" from the
"Shopify App Store". Other examples include:
02 App Store;
Intel app store;
@metro App store;
Nokia apps store;
Sendmail Sentrion App Store;
AndAppS tore;
WinMoAppstore;
Asus App Store;
Notes App Store (Lotus)
Copies of the above uses of app store are attached (relevant pages only)
Also submitted, at Attachment 12, is an extract (relevant pages only) from the
report of Apple Inc's (the CTM owner) "Earnings Call" of October 18, 2010
during which the founder of Apple Inc., Mr Steve•Jobs, referred to competitors'
app stores:
"In addition to Google's own app marketplace, Amazon, Verizon and
Vodafone have all announced that they are creating their own arm stores
for Android. So there will be at least four app stores on Android, which
customers must search among to find the app they want and developers
will need to work with to distribute their apps and get paid. This is going
to be a mess for both users and developers. Contrast this with Apple's
integrated App Store, which offers users the easiest-to-use largest app store
in the world preloaded on every iPhone. Apple's App Store has over three
times as many apps as Google's marketplace and offers developers' onestop shopping to get their apps to market easily and to get paid swiftly".

If Apple's app store is indeed, as claimed, "the largest app store in the world"
then the inference can be drawn that there are other (smaller), third party app
stores.
Finally, with respect to those services covered by the CTM registration which
are not strictly related to application (app) software the mark could be held
to fall foul of the provisions of article 7(1) (g) CTMR insofar as it is capable of
deceiving the public as to the nature of such services within the meaning of the
aforementioned article.
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BARZANO & ZANARDO

We refer, in particular, to services such as "maintenance and repair of handheld
mobile digital electronic devices and other consumer electronics" (in class 37) and
"maintenance, repair and updating of computer operating system software and
computer utility software" (in class 42).

***** **************************************** ****

**********************

In view of the above, we hereby ask the Cancellation Division to Declare the
Invalidity of Community Trade Mark Registration No. 007078314 for APP
STORE in the name of Apple Inc on the grounds of articles 7 (1) (b), (c) and (d)
of the CTMR and order the costs of the present proceedings to be borne hy the
owner of the CTM registration.
Respectfully submitted on behalf of Nokia Corporation.
Barzanb & Zanardo

ck.04`"
Peter McAleese

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