With millions of apps on the market, developers rely on having an eye-catching logo and name that is immediately identifiable to the consumer when searching the App Store. Unfortunately, unscrupulous third parties can take advantage of this and deliberately create apps that have very similar logos and names to those of established apps, to mislead customers into downloading their app by mistake. Or, a third party could unknowingly create a new app with a name or logo that is very similar to an established one, creating a risk of confusion and potential loss of business for both businesses.
So what can developers do if a competitor has created an app that has a confusingly similar name or logo? In this guide, our trade mark solicitors will discuss what the most common forms of trade mark infringement are on the App Store and what action you can take to enforce your trade mark rights.
Contents:
- What is trade mark infringement?
- What are the most common forms of trade mark infringement on the App Store?
- How can I identify if my trade mark is being infringed on the App Store?
- How does Apple handle trade mark infringement complaints on the App Store?
- What evidence do I need to prove trade mark infringement on the App Store?
- Can I take legal action outside of Apple’s complaint process for trade mark infringement?
- What happens if my trade mark infringement complaint is rejected by Apple?
- How long does it take for Apple to resolve a trade mark infringement complaint?
- Summary
What is trade mark infringement?
Trade mark infringement is the unauthorised use of your trade mark or of a confusingly similar trade mark by a third party for the same or similar goods and services. For example, a third party using an existing mark or a similar mark on their website, social media, advertising, packaging or on goods themselves, to give the impression that the businesses providing the goods and services are the same or associated in some way.
What are the most common forms of trade mark infringement on the App Store?
On the App Store, infringement is most likely to take the form of using similar names, logos, or app descriptions that could mislead users into thinking the infringing app is affiliated with the established brand.
How can I identify if my trade mark is being infringed on the App Store?
Once you have registered your trade mark, you should regularly monitor the App Store charts and search results for apps that have similar names, logos and/or descriptions to yours.
There are companies that offer App Store monitoring services, through the use of A.I. technology to scan, find and remove fake apps and other unauthorised use of branded material on the App Stores. You could instruct a service-provider to do this for you or purchase or rent software that will allow your organisation to conduct its own monitoring. Regular internet searches can also identify new businesses that have set up websites and apps with the same or similar names as yours.
You can also set up ‘watch’ services which cover the trade mark registers to inform you when an application is filed to register the same or a similar app name or logo to your registered trade mark(s). These watches are usually set up by a trade mark solicitor or attorney who will then report the results to you and advise you if any action is required to enforce your registered mark.
You should also educate your staff to report all suspected infringements to the management and to use your trade mark correctly at all times, with the registered ® symbol wherever possible, to warn third parties that the registered trade mark is your business’ property and is protected against unauthorised use.
How does Apple handle trade mark infringement complaints on the App Store?
Apple states that it operates a “highly curated” App Store with every app reviewed by experts before being listed and strives to maintain the integrity of its platform. To list an app on the App Store, you must submit your app and metadata in “App Store Connect” which is the Apple Developer Programme, for Apple to review and check that it confirms to their guidelines. They also scan the app for malware and other malicious software that could compromise users’ data and online security. The App Store guidelines include requirements for developers to provide up-to-date contact information and verifiable information to Apple and its customers so they can understand who they are engaging with and can contact you regarding any issues.
Apps which are found to use a third party’s trade marks, copyright or patents without authorisation will be removed from the Store and the developer may be expelled from the Apple Developer Program. Apps which impersonate other apps or services or which facilitate illegal file sharing, streaming or downloading of media without explicit authorisation will also be removed. You may be asked to provide Apple with proof of authorisation, such as a trade mark.
Apple has a content dispute form on its website for reporting content in apps and on its App Store that infringes a business’ intellectual property rights. There is an alternative form for App Store name disputes for trade mark owners to report infringements and apps that are blocking them from reserving and listing their own app names on the store. Apple will usually contact the owner of the app and ask them to contact you directly to try to resolve the issue. If this is unsuccessful, you can contact the App Store Connect team for further assistance. You will need to submit evidence of your ownership and prior use of the trade mark that the app is infringing. It is not a strict requirement to have a registered trade mark in order to file a content dispute on the App Store. It is easier to establish ownership if the trade mark is registered and this will enable Apple to respond more quickly to your dispute.
Apple may take a week or two to review and investigate your claim. You should follow up with them if you have not heard back within this period. Apple are more likely to be responsive if you instruct a trade mark solicitor to prepare and file the dispute form for you. A trade mark solicitor can assist you in providing detailed and accurate information about the disputed content, including the link to the app that you are filing the trade mark dispute against. This can help to expedite the process and allow Apple’s review team to locate and assess the app in question more easily. Any comments that you provide will be shared with the owner of the disputed app.
Apple will usually respond by email and provide a claim reference number. You can then reply with further details and evidence to back up your claim, if required. Apple may not be inclined to do much more than provide you with the contact details of the infringing party and leave it to you to contact them, initially.
If the owner of the app responds to the infringement notice, you may be able to negotiate a solution with them, for example asking them to change certain aspects of their name, logo or content. If they do not comply, you can ask your solicitor to send them a cease and desist letter, threatening legal action if they do not remove the infringing app. Our trade mark solicitors can help you draft and send a cease and desist letter for you for a relatively small fee.
What evidence do I need to prove trade mark infringement on the App Store?
As well as details of your own registered trade mark you should provide as much evidence as possibleof the infringing app includingphotographs and screenshots of the infringing content, sales figures and numbers of downloads as well as any negative feedback on the app or correspondence from consumers that are confused about the app’s origins. If your trade mark is not registered, you will need to provide sufficient evidence of your prior use of the mark and its transaction history in the territory in which is it being infringed.
Can I take legal action outside of Apple’s complaint process for trade mark infringement?
You can still bring an action in court for registered trade mark infringement and/or passing off of an unregistered trade mark. This may be necessary even if Apple removes the infringing app as the third party may be using your trade mark elsewhere, for example on goods or services that they are providing or on another platform such as Amazon or Instagram.
Or it may take too long for Apple to eventually remove the infringing app and you could experience significant loss of revenue or damage to your brand in the meantime, whilst the app is still listed on the Store. You might want to send a cease and desist letter and proceed with legal action at the same time as filing your infringement notice with Apple. Our trade mark solicitors will be able to explain the different options available to you based on your circumstances.
What happens if my trade mark infringement complaint is rejected by Apple?
You can appeal against a decision by Apple to refuse to remove an infringing app by contacting a trade mark solicitor to discuss what other legal action you can take.
An app owner who’s app has been removed by Apple can also appeal against this decision by submitting an appeal. So an app could later be re-instated even if you have been initially successful in getting it removed from the App Store.
How long does it take for Apple to resolve a trade mark infringement complaint?
It could take six months or longer for Apple to take any action other than providing your with contact details for the owner of the infringing app. They are likely to wait and see if you can resolve the matter with the owner directly first.
Summary
Apple’s App Storedeals with many hundreds of applications for app listings every day. With so many apps listed on the Store, there is a high risk of at least one and sometimes many other apps using trade marks and logos that are the same as or confusingly similar to your own prior trade mark rights. This could be accidental or it could be deliberate copying or counterfeiting. You must take action quickly to have any infringing content taken down. Although Apple’s own dispute process can be effective in this regard, it can also be lengthy and a multi-faceted approach may be more appropriate, by instructing a trade mark solicitor to take any necessary legal action that may be required, at the same time.
