Nike triumphs over Puma in ‘Footware’ TM dispute
Nike can register ‘Footware’ as a UK trademark covering computer hardware, telecommunications, and certain software, in a defeat for rival Puma.
In a decision published on September 2, the UK Intellectual Property Office (IPO) rejected Puma’s argument that the mark is descriptive and lacking distinctiveness.
A Nike subsidiary applied to register the mark last March in classes 9, 38, and 42. It covers a range of goods and services including apps and cloud computing.
Puma objected, arguing that it was an “obvious portmanteau of footwear and hardware or software”.
According to Puma, the mark “simply informs consumers that the goods and services in question relate to hardware/software in or for feet and footwear”.
But the IPO disagreed, finding that it was unclear “on what basis ‘Foot’ is descriptive of any of the goods or services”.
While Puma argued that ‘Footware’ was an “obvious misspelling” of footwear, the IPO said it was more likely to be perceived as a play on words.
“It seems to me that whilst the average consumer may ultimately deduce that ‘Footware’ means software or hardware (or related services) for footwear, specifically footwear with embedded technology, it is not a meaning which is immediately apparent or easily recognisable without some stretch of the imagination,” an IPO official wrote.
Puma also failed to convince the IPO that the term ‘Footware’ is already in common usage and lacking in distinctiveness.
According to the IPO, Puma provided “very limited evidence of ‘Footware’ in use in the UK, and still less evidence of its use in relation to any of the goods or services at issue.”
“The evidence is, in my view, wholly insufficient to establish that the use of ‘Footware’ had become customary in the trade, for any of the contested goods or services, at the relevant date,” the official wrote.
Puma must now pay costs of £1,300 ($1,695) to Nike for the unsuccessful opposition.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox.
Today’s top stories
UKIPO publishes wide-ranging AI and IP consultation
Africa’s first IP cooperation project approves GI registration
