High Court Dismisses Appeal By Puma Against IPO Decision Rejecting Its Opposition To Registration Of FOOTWARE By Nike

• Published date: 21 July 2021
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wiggin
• Author: John Colbourn

Facts

Puma SE opposed an application by Nike Innovate CV to register a UK word mark for FOOTWARE for various goods and services in Classes 9, 38 and 42, including software and hardware. The opposition was based on the general notion that the application mark was descriptive and lacked distinctiveness under s 3(1) of the Trade Marks Act 1994. In particular, Puma argued that: (i) under s 3(1)(c), the mark was an obvious portmanteau of "footwear" and "hardware" or "software" and therefore the mark was descriptive of the kind of goods and services covered by the application; and (ii) under s 3(1)(d), the mark had become a common descriptor of the goods for which registration was sought and was now customary in the relevant trade.

The Hearing Officer rejected Puma's opposition, finding, inter alia, that FOOTWARE was not a combination of two non-distinctive elements that amounted to no more than the sum of its parts. She said that whilst the average consumer might ultimately deduce that FOOTWARE meant software or hardware for footwear, specifically footwear with embedded technology, it was "not a meaning which [was] immediately apparent or easily recognisable without some stretch of the imagination". She also found that Puma's evidence on the use of FOOTWARE in the UK was wholly insufficient to establish that the mark had become customary in the trade for the goods or services in question. Puma appealed to the High Court.

Decision

Section 3(1)(c)

Mr Justice Zaccaroli rejected Puma's argument that the Hearing Officer had failed to consider the "notional and fair use" of the mark across the full range of its goods and services for which registration was sought, in particular in relation to footwear with embedded technology.

Zaccaroli J agreed that the Hearing Officer had not actually used the phrase "notional and fair use", but said that there was no reason for her to have done so. She had set out the substance of the "notional and fair use" test derived from European case law and she had quoted from Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2012] EWHC 3074 (Ch), which summarised the principles and concept of notional use.

She had concluded that FOOT was not descriptive of any of the goods or services for which registration was sought and had identified that software, hardware and firmware had "some application in footwear with embedded technology". However, she had concluded that FOOTWARE would not be considered descriptive of such services.

Puma...