Spanish brand loses bid to oppose Nike eyewear sign in EU

Nike’s innovation arm fends off opposition to trademark registration | Separate case sees PTAB agree to review Nike patents disputed by Lululemon.

Nike’s innovation arm has prevailed at the EU General Court against a Spanish eyewear brand in a dispute over figurative signs for use in-store and online.

In a judgment filed today, Wednesday July 12, the court rejected Multiópticas’ request to annul a decision handed down a year ago by the European Intellectual Property Office’s (EUIPO) Fourth Board of Appeal, which favoured Nike Innovate.

The Nike subsidiary had applied to register a trademark in November 2019, a figurative sign featuring two black geometrical shapes—one an arch-like shape, the other a circle.

This was described as relating to “retail store services in relation to eyewear; and online retail ordering services by means of a global computer network in relation to eyewear”, in Class 35 of the Nice Classification.

In April 2020, Multiópticas filed a notice of opposition with the EUIPO, claiming that Nike Innovate’s applied-for mark was too similar to its own four marks, registered between June 2009 and October 2013 for the same services in Class 35.

These marks feature the letters ‘mó’, presented in four various configurations.

The EUIPO’s Opposition Division rejected Multiópticas’ opposition to Nike Innovate’s application in September 2021, which the Spanish brand appealed.

The Fourth Board of Appeal rejected this, upholding the Opposition Division’s decision that the signs at issue were not similar.

Explaining this decision, the court said: “In view of the principle that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the mark applied for will be perceived as a combination of two interrelated black geometrical shapes, with the result that the relevant public will simply perceive that mark as a fanciful figurative device which does not convey any clear concept.”

The court also rejected Multiópticas’ request that Nike Innovate should pay costs as “manifestly devoid of purpose, inasmuch as the latter is not a party to the proceedings before the court.”

The court  dismissed the action and ordered Multiópticas and the EUIPO to pay their own costs.

Nike at the PTAB

In a separate case, the Canadian sportswear brand Lululemon has convinced the US Patent Trial and Appeal Board ( PTAB) to review Nike patents, related to an adaptive watch and a method of tracking athletic performance.

One of the patents in dispute is US patent number 8,620,413B2, described as “a watch or other type of portable electronic console that employs a number of different functions in order to improve its usability.”

The PTAB handed down its decision Filed on Monday, July 10, to grant inter partes review (IPR) of various claims of Nike’s ‘413 patent.

Lululemon, said the PTAB, “has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims”.

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