Diritto dei Prodotti Digitali | IT Law


COMUNICAZIONE DIGITALE | Università degli Studi di Milano

Hasbro agisce contro Asus per presunta violazione del marchio “transformer prime”

Toy maker Hasbro is suing Asus, claiming that naming Asus’s latest tablet the Transformer Prime is in violation of Hasbro’s brand copyright. In a statement, Hasbro asserted that ASUS was effectively banking on association with the legendary animated show, comics, and toys to sell the Transformer Prime. Last rumors suggest that because of the recent popularity of the movie franchise, Hasbro could argue that Asus was banking on the popularity of the Transformer franchise to sell a few more tablets. Companies in different industries are allowed to use similar named products without violating copyright law if the industries are essentially mutually exclusive, meaning company A is not benefiting financially from the name trademarked by company B. While Asus may be counting on the clear difference between a tablet and Hasbro’s line as a legal safety net, the diversity of Hasbro’s range may create enough of a conflict to force a name change.

“App Store”: marchio o nome generico?

Apple filed for the trademark shortly after the launch of the iPhone App Store in July 2008, describing the App Store as “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.”

On Monday, Microsoft challenged Apple’s application by filing a motion for a summary judgment that would deny Apple the trademark, PC World reports. According to the filing, the Redmond, Wash., software giant objects to the trademark on the “grounds that ‘app store’ is generic for retail store services featuring apps and unregistrable for ancillary services such as searching for and downloading apps from such stores.”

The filing alleges that “undisputed facts” establish that ‘app store’ is generic for retail store services featuring apps: “‘App’ is a common generic name for the goods offered at Apple’s store, as shown in dictionary definitions and by widespread use by Apple and others,” and “‘Store’ is generic for the ‘retail store services’ for which Apple seeks registration, and indeed, Apple refers to its ‘App Store’ as a store.”

The motion goes on to cite a recent quote from Apple’s own Steve Jobs as evidence of the term’s use as a generic name. “In addition to Google’s own app marketplace, Amazon, Verizon and Vodafone have all announced that they are creating their own app stores for Android,” the filing quotes Jobs as having said. “There will be at least four app stores on Android which customers must search through to find the app they want and developers will need to work to distribute their apps and get paid.”

According to Microsoft, Apple has unfairly prevented other companies from referring to their application retail stores as app stores. “Microsoft would like the ability to use ‘app store’ to fairly describe its own retail store services for apps, but Apple asserts that such uses are infringements of its rights and it has sent demand letters to companies using ‘App Store’ in their names,” the motion reads. “Apple’s demands have apparently caused some competitors to change their use to ‘Application Store’ or ‘App Marketplace.’