Trade Marks - Re FOOTWARE, Puma SE v Nike Innovate CV
|Author Anthony Appleyard Licence CC BY-SA 3.0 Source Wikimedia Commons|
Chancery Division (Mr Justice Zacaroli) Puma SE v Nike Innovate CV  EWHC 1438
In Trade Marks - Equisafety v Battle Hayward and Bower 7 Jan 2021 IP Northwest, I discussed Mr Nicholas Caddick QC's judgment in Equisafety Ltd v Battle, Hayward and Bower, Ltd and another  EWHC 3296 (IPEC) (8 Dec 2021) where the defendants counterclaimed for a declaration that the registration of MERCURY for a range of high visibility equestrian products was invalid on the ground that the mark was descriptive. This is another case where the registration of a word mark was challenged on a similar ground.
The mark in question was FOOTWARE and registration was sought by Nike Innovate CV for a wide range of goods and services in classes 9, 38 and 42 relating to computing and telecommunications. The application was opposed by Puma SE on the following grounds:
"First, that the Hearing Officer erred in failing to consider the notional and fair use of the trade mark across the full range of its very broad specification of goods and services. Second, if she had considered notional and fair use in relation to the area of specifications where Puma contends that the mark is descriptive, she could only have reasonably concluded that the mark was descriptive."