FAL Lawyers
Menu
Home Our People Legal Services Intellectual Property Industry Expertise News & Resources Contact Us
Back to Resources

Do I need to Trade Mark my App name?

A trade mark is something that identifies your brand and distinguishes it from others.  It also helps you build a reputation and brand identity with customers.

If you are planning on creating a memorable and distinctive App, extending your existing brand or making money from your App then, YES, you should definitely consider registering a trade mark.

The icon of a smart phone Application or ‘App’ defines a brand and an identity. In this digital era, App developers and owners have a growing need to distinguish their Apps from millions of potential competitor Apps. With such a proliferation of Apps, a simple search of the iTunes® and the Google Play Stores often reveals hundreds of Apps with similar functionality, names (e.g, calculator) and logos. This is where trade marks fit in.

A unique name or logo allows the consuming public to identify a particular App, and a trade mark can help keep that brand distinctive.  After properly registering a trade mark, an App owner can monitor and prevent infringing App creators from using its protected name or look.

How do I Trade Mark my App name?

Firstly, you need to choose a distinctive name:

Some trade marks are stronger than others. Coined up terms like ‘Skype’ or non-descriptive terms like ‘Apple’ for computers or ‘Shazaam’ are more readily registrable than terms that are descriptive of an App’s functionality.

App owners often prefer having descriptive names because it tells the consumer what the App does, but descriptive names are less likely to pass the scrutiny for trade mark registration.  It is also difficult to keep a competitor from using the same or similar descriptive name for their App. This ‘same/similar name’ competition can significantly affect downloads and even the reputation of your App.

We generally advise that short, pronounceable and easy to remember names are the way to go.  The best App names sometimes use a two-part name consisting of descriptive and non-descriptive elements like ‘SoundHound’ or ‘QR Droid’.  We’ve even seen three-part names such as ‘PicSafe Medi’ for a secure mobile medical imaging system.

Secondly, you need to search:

After considering several distinctive names for your App, a search should be conducted to ensure it is unique.  For Apps, this search should commence on the iTunes® and Google Play Stores, followed by a general internet search. If an App name has more than one word, searches of the individual words should also be conducted.

It is also paramount that a search of the relevant trade mark database is conducted. These preliminary searches will allow the App owner to identify what is out there thus refraining from choosing a name that could potentially infringe third party rights.

Thirdly, you need to think about which countries to protect your App in:

You should seek to trade mark your App name in each country in which you see a substantive market for your App.  This can become an expensive exercise so you need to think about which countries are of the most importance to your App.  If your App becomes a phenomenal hit in an unregistered country, if you’ve adopted the right trade mark strategy, you may still have opportunities to obtain trade mark registration thereafter.

Fourthly, you need to think about what ‘classes’ apply to your App:

There are 45 different classes for trade marks.  When you submit a trade mark application you need to identify which classes the application relates to (the more classes, the higher the costs).

Generally a trade mark application will submit their application for 2-3 different classes.  App owners might wish to consider the following:

·         Class 9: App owners generally consider selecting class 9 as this relates to computer programs, including software for mobile phones and portable devices;

·         Other Classes: Other classes to select will depend on a consideration of the functionality of your App.  For example, if your App provides a medical function you might consider class 44 which relates to medical services.

How much will it cost?

Costs for protecting a trade mark can range depending on how extensive a search is performed before filing to protect the App’s name. It can also range depending on how broad protection is wanted. For example, protection of a trade mark may be required in one or a few jurisdictions or it could potentially be required in many countries. Costs can also be affected by the amount of goods and services protected under the trade mark. Each different classification attracts a fee. It is important to weigh the costs against the revenue goals when determining an App’s right type of trade mark protection.

As the digital industry continues to grow at a phenomenal rate, it is important that App owners stay current with the technology. The competition is fierce. One way to make sure that the work put into an App matters is to protect such work from those who might want to exploit or steal it. Trade mark protection for the name and design of an App could prove to be the vital ingredient to the success of your App.

Please contact FAL Marks & Brands should you require any assistance in relation to trade marks.

By Fabiola Dos Santos, Senior Trade Mark Attorney and Jason Watson, Partner

10 May 2013