27 April 2016Trademarks

Nike jumps for joy in UK trademark suit

Nike has won the latest round of its trademark dispute with a Turkish footwear company centring on the multinational’s Jumpman brand.

In a decision handed down last week, the UK Intellectual Property Office (IPO) upheld an earlier ruling that allowed Nike to register a trademark for the term ‘Jumpman’ despite opposition from Turkish company Intermar Simanto Nahmias.

Intermar has owned a European Union trademark (EUTM) for the term ‘Jump’ since 2006 covering class 25, which includes clothing and footwear.

In 2007, the company opposed Nike’s EUTM application for the term ‘Jumpman’, also applied for in class 25, on the basis of a likelihood of confusion between the marks.

The European Union Intellectual Property Office granted Intermar’s opposition, prompting Nike to attempt to convert its mark into national trademarks, including a UK trademark.

The UK-based application was republished and Intermar opposed it. As Intermar’s earlier EUTM for ‘Jump’ had been registered for more than five years, Intermar was required to prove use of its trademark in the EU.

In a decision handed down in October 2014, the IPO’s hearing officer Oliver Morris found that during the relevant five-year period Intermar sold 55,000 pairs of shoes with a value of approximately $476,000 to a Bulgarian company.

The sales occurred in the last sixteen months of the five-year period for proving use.

But the IPO dismissed the opposition after determining that the market for footwear in the EU is huge and that the sales figures were “miniscule” in comparison.

Intermar appealed against the decision but the IPO’s appointed person upheld the ruling on Friday, April 22.

Dale Carter, an associate at law firm Rouse and who represented Intermar, said the ruling raises “significant question marks over the effectiveness of EUTMs”.

“For those companies with a smaller sales footprint in the EU, or even those larger firms focusing on just one or two EU member state markets, enforcing an EUTM that has been put to genuine, but limited, use may no longer be possible,” he said.

He added that the ruling may be welcomed by larger traders in the EU, who he said “will benefit if uncertainty drives smaller players to protect their trademarks nationally rather than at an EU-wide level, or to shy away from enforcing their EUTMs for fear of this decision being followed”.

Nike also owns a logo for its Jumpman brand which shows a silhouette of former basketball star Michael Jordan leaping through the air.

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