Trade Marks - Re FOOTWARE, Puma SE v Nike Innovate CV

Author Anthony Appleyard Licence  CC BY-SA 3.0 Source Wikimedia Commons

Jane Lambert

Chancery Division (Mr Justice Zacaroli) Puma SE v Nike Innovate CV [2021] 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 [2021] 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:

"i) Under s. 3 (1) (b), that the mark is an ordinary descriptive term for the goods and services for which registration is sought and does not, therefore, possess sufficient distinctive character for registration. It is not striking, surprising, unusual or arbitrary; 
ii) Under s. 3 (1) (c), that the mark is an obvious portmanteau of 'footwear' and 'hardware' or 'software'. As the goods and services for which registration is sought encompass software and hardware, the mark is descriptive of the kinds of goods and services covered by the application. The mark simply informs consumers that the goods and services in question relate to hardware/software in or for feet and footwear. It is alleged that the term is already used descriptively for goods and services in this field and/or that the mark could be used in that way; 
iii) Under s. 3 (1) (d), that the mark has become a common descriptor of the goods for which registration is sought and is now customary in the relevant trade. The opponent claims that the 'theoretically descriptive' use of 'FOOTWARE' (being a portmanteau of footwear and software/hardware) has already been adopted by multiple users in connection with footwear and software/hardware technology"

The opposition was heard by Heather Harrison on behalf of the Registrar in Re Trade Mark Application No.  3383412 FOOTWARE BLO/415/20 on 29 June 2020 and she delivered her decision on 2 Sept 2020.  By para [35] of her decision, Ms Harrison dismissed the opposition and awarded £1,300 costs to Nike.

Puma appealed to the Court on the following grounds in respect of s.3 (1) (b) and (c) of the Trade Marks Act 1994:

"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."

Its ground of appeal with regard to s.3 (1) (d) was "that the Hearing Officer again erred because she failed to consider notional and fair use of the mark, which included use in relation to footwear products."

The appeal came on before Mr Justice Zacaroli on 17 May 2021. His lordship delivered judgment on 27 May 2021 (see Puma SE v Nike Innovate CV [2021] EWHC 1438 (Ch) (27 May 2021).

Referring to para [34] of the Court of Justice's judgment in Case C-398/08 P Audi v OHIM [2010] ECR I-535 the learned judge held at para [18] of his judgment that the registrability of a mark must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the relevant public's perception of the mark.  As to whether it was descriptive, he added at [21] that a sign can be refused registration "only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of [the characteristics in section 3 (1) (c)]".  Also, a sign will be descriptive "if there is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question".

As to Puma's first ground, his lordship found that the hearing officer had carried out the necessary assessment across the whole range of goods and services, including use in relation to footwear products relied on by Puma. He noted at para [26] that she concluded that "FOOT" was not descriptive of any of the goods or services for which registration was sought. She identified the precise sub-set relied on by Puma (software, hardware and firmware having "some application in footwear with embedded technology" but concluded that "FOOTWARE" would not be considered descriptive of such services.  He continued that the second ground arose only if the judge had found that there the hearing officer had not carried out an adequate assessment.  Since she had, the second contention was "in reality a complaint as to the application of the (correct) legal principle to the facts."  

Accordingly, the judge dismissed the appeal.

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