Apple, Woolworths in Australian trademark dispute, media in hysterically confused panic

Oh boy. So if you haven't already seen some news on this, Apple's opposing the formal registration of the Australian grocery store Woolworths' logo, pictured above. We'll be honest: we saw this story when it was first reported last night by The Age, and we passed on it. Why? Because while we're not experts in Australian trademark law, we happen to have an ex-US trademark attorney on staff (cough), and the Australian system is similar enough to the US system that a simple notice of opposition just isn't that interesting. Here's what's really going on, outside of the sad media frenzy that surrounds anything Apple does: in both the US and Australian systems, a trademark registration is applied for with the appropriate federal agency -- the USPTO, or, in this case, IP Australia. After a period of review by that office for eligibility, it's then published for other companies to review and potentially oppose because it would cause confusion with their own marks. This is the fundamental essence of the trademark process, and every company with a major mark goes through it several times a year -- it's not a lawsuit, and there's no judge or jury, just the trademark examiner. Sure, there are some potentially meaningful and expensive consequences, but filing and responding to oppositions is something that any trademark attorney does quite frequently, and it's not like Apple's aggressively suing anyone here. It's just part of the process.

We'd also like to note that all these stories today have but a single source, and that Apple actually filed their notice of opposition in March but no one noticed until Woolworths talked to The Age. If we had to bet we'd say this is a tactical move by Woolworth's PR team to churn public opinion before a decision is issued -- and if it is, well, congratulations to them, because it certainly looks to us like the reality of this story has been totally overshadowed by the second, slightly more fictional story the tech media would like to tell. Sure, it'll be big news if Apple's opposition is successful and Woolworths registration is denied -- and we'll obviously cover it if it happens -- but chances are that Woolworths and Apple's highly-paid attorneys are going to quietly go through the trademark process and come out with an agreement, and we'll never hear about this again. Until the next time everyone gets this story wrong.

Update: Oh, and just to make this perfectly clear, Woolworths' application covers "Retailing and wholesaling services including... electronic stores," so there's definitely overlap here.

Update 2: You know, we've actually covered this exact same territory with Apple in the past -- will anyone ever learn?

Read - Original story in The Age
Read - Woolworths trademark filing 1258297
Read - Woolworths trademark filing 1258298

[(Unverified) Posted Oct 5th 2009 8:02PM]

I understand the process, but when a judge sees Apple's dispute, doesn't he just laugh at them? I mean honestly, their logo is a boring silhouette of an APPLE! Is it even legal to trademark natural earthly shapes? Hell, I'll make up millions of ghost companies and call each one what the shape of the plain logo is that I assigned to it, and make it so no one can make logos ever again! Look out anyone who wants to use a logo that is round, pointy, or ziggy zaggy, cause I'm making a companies called Circle, Triangle, and Mountain-y.

Scenario:

Company representing "Apple" - "Judge! Judge! I trademarked a square as our company logo, were called SQUARE, we sell tires... This is preposterous that this other company called "Boxy Co. Shipping" wants to use a more creatively developed square shaped logo, that has additional features, and colors, and really has nothing related to our logo in anyway except for the fundamental basic attributes of 4 sides! I demand they must choose another logo!"

Judge - "You bring up a valid point..I mean, you did think of a logo that has 4 sides first... It was a very genius idea of you, that I'm sure no other human on the planet could have ever conceived on their own without having witnessed the pure beauty of yours first. Your argument stands. You win the game! 1 million points!"

[Monkeyspit Posted Oct 5th 2009 8:27PM]

This is just posturing on Apple's part: the proverbial 10 ton guerrilla throwing itself around in a giant display, not because it wants/expects to win, but as a warning to any and all that Apple will get litigious on anyone that comes within a mile of their trademark.

[SrgBacon Posted Oct 5th 2009 9:05PM]

Guess ill have to start eatin Banannas again...

[CJ Posted Oct 5th 2009 9:39PM]

To be fair, Nilay, all of thw Woolworths-owned electronic stores all operate under a completely different name(s)/Logos (Tandy/Dick Smith Electronics)

... not to mention that DSE is an official Apple Reseller.

Mind you, I work for Woolworths' biggest competitor, Coles, so I should just ignore this.

[remotecontrolled Posted Oct 5th 2009 10:58PM]

Am I slow, or does it say the filing deadline is in the past, as in September 16?

Hm. In any case, isn't it about time for this thread to break down into a flame war?

[1800BelowMe Posted Oct 5th 2009 11:17PM]

In reference to
"Update: Oh, and just to make this perfectly clear, Woolworths' application covers "Retailing and wholesaling services including... electronic stores," so there's definitely overlap here."

Just to clarify there is actual no overlap. Woolworths uses the green W logo that looks like an apple for the supermarket chain and head company only. The stores Woolworths own that sell electronics include Dick Smiths (Previously Dick Smiths Electronics), Tandy Electronics and to a lesser part Big W. All of these companies owned by Woolworths, that sell electronic goods, use completly different logos, none of which look like an apple. And yes the electronic companies are owned by Woolworths but this is never advertised. Some people are aware of this, some are oblivious, most couldnt care less.

So no there is no overlap engadget.

[(Unverified) Posted Oct 6th 2009 7:00PM]

i think woolworth should get in trouble because i don't like them they keep putting food up all the time plus petrol

[(Unverified) Posted Oct 6th 2009 2:34PM]

The Woolworths logo is meant to be a lettuce not an apple

[(Unverified) Posted Oct 25th 2009 12:45AM]

Test comment