As brands expand into new areas, particularly those driven by emerging technologies, they are often looking for innovative and memorable trade marks. Nike appears to have scored with its registration of FOOTWARE for various tech-related goods and services.
In a judgment on 27 May 2021, High Court Judge Mr Justice Zacaroli upheld a UK IPO Hearing Officer’s decision rejecting Puma’s opposition to Nike’s registration of FOOTWARE (Puma SE v Nike Innovate CV [2021] EWHC 1438 (Ch)).
What's the trade mark?
Nike's FOOTWARE mark is now registered for:
computer hardware modules, electronic devices and computer software; computer software and firmware; software for electronic devices; computer software for network and device security; computer software in class 9
telecommunication services in class 38
application service provider [services]; cloud computing featuring software [services]; providing temporary use of non-downloadable cloud based software [services] in class 42
What's the opposition?
Puma’s opposition was based on Sections 3(1)(b), (c) and (d) of the Trade Marks Act 1994. In particular, it alleged that the mark was a portmanteau of footwear and hardware/software and was therefore descriptive, and that the mark had become customary in the relevant trade.
Zacaroli J said the Hearing Officer had considered the full range of possible goods and services for which registration was sought, and concluded that neither FOOT nor FOOTWARE was descriptive of any of them.
Descriptive?
He added that the conclusion that FOOT was not descriptive of any of the goods or services was one the Hearing Officer was entitled to reach. Even if FOOTWARE was seen as a misspelling of footwear, it was not descriptive of the relevant goods and services.
Customary?
Is FOOTWARE a customary term in the world of footwear? The judge concluded that the hearing officer had considered all the evidence, and found that most of it was not from the UK and therefore not relevant. There was no error of principle in her assessment and consequently she was entitled to find that it was not a customary term.
Portmanteau words and neologisms are a much-contested area in trade mark cases, with decisions often finely balanced. The successful defence of FOOTWARE suggests that Nike (or its brand consultants) have come up with a clever, original and – crucially – registrable new brand.
To find out more about the issues raised in this case including trade mark disputes and filing contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com
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