Burges Salmon LLP - UK
On 14 March 2019, Nike Innovate CV applied to register the word mark FOOTWARE for a range of goods and services in Classes, 9, 38 and 42 for technology and telecommunications. Puma SE opposed on the basis of Sections 3(1)(b) (non-distinctiveness), 3(1)(c) (descriptiveness) and 3(1)(d) (generic term in the trade) of the Trademarks Act 1994. The opposition was directed against all the goods and services of the application. The essence of Puma’s objection was that the mark described footwear with embedded technology or ‘smart’ footwear.
The hearing officer rejected the opposition on the grounds of Sections 3(1)(b) and (c), finding that ‘foot’ was not descriptive of any of the goods or services listed in the application and was therefore distinctive for them.
While ‘ware’ is not inherently distinctive for goods and services in Classes 9 and 42, as it could be perceived to refer to software, firmware or hardware, the hearing officer held that the combination ‘footware’ was not a combination of two non-distinctive terms that did not amount to more than the sum of its parts. Instead, she found that the mark was not descriptive of any of the goods and services, as even if consumers deduce that ‘footware’ means software or hardware for footwear (specifically, shoes with embedded technology), this requires some stretch of the imagination.
Neither element of the mark was found to be descriptive for services in Class 38. Further, the very limited evidence filed to support the opposition under Section 3(1)(d) failed to establish that FOOTWARE has become customary in the trade for any of the goods or services at the relevant date.
Puma claimed that the hearing office had failed to consider notional and fair use of the trademark across the broad range of specified goods and services. In particular, it claimed that she had failed to consider notional use of the mark for the sub-set of goods and services ‘footwear with embedded technology’, which the broad specifications encompassed. Had the hearing officer considered this, she would have concluded that the mark was descriptive.
The UK High Court confirmed that for Section 3(1)(c), the test is whether the applied-for mark is descriptive of the goods and services when notionally and fairly used. It must be reasonable to believe that the sign will be recognised by the relevant public as a description of one of the characteristics of the goods and services. What is more, there must be a sufficiently direct and specific relationship between the sign and the goods and services. The public must immediately perceive, without further thought, a description of one of the characteristics of the goods and services.
The court found that the hearing officer had carried out the necessary assessment across the whole range of goods, including the sub-set relied on by Puma, in the context of notional, rather than actual, use. However, she did not find the mark to be descriptive for such services. On the basis that the hearing officer had fully assessed the fair and notional use of the mark, the court upheld her finding that the mark did not fall foul of Section 3(1)(c) and that she was entitled to find that the mark was not descriptive.
Although the hearing officer’s finding that ‘ware’ is not descriptive for Class 38 services was not fully explained in her decision, that did not affect her finding that the mark FOOTWARE was a neologism and not descriptive for any of the goods or services claimed. Even if the spelling of ‘footware’ was corrected to ‘footwear’, the mark was still not descriptive for all or any of the goods and services. Instead, FOOTWARE requires a higher degree of mental gymnastics to link it to software used for technology embedded in shoes. Moreover, the court found no error in the hearing officer’s finding that the limited evidence of use of the term ‘footware’ did not establish descriptiveness for software.
With regard to Section 3(1)(d), the court considered that there had been no error in the hearing officer’s understanding of the evidence, nor was the decision one which no reasonable tribunal could reach. It held that the appeal was in fact an appeal against a finding of primary fact. Therefore, it refused to overturn the finding and the appeal was dismissed.
Despite Puma’s claims that the trademark is an obvious portmanteau, Nike has been successful in its registration of FOOTWARE in the United Kingdom. No errors of principle were found on appeal. Instead, the hearing officer had considered notional and fair use of the mark and Puma’s other arguments were in substance an appeal against findings of fact. The case is a reminder of the difficulties in overturning a reasoned decision. It also restates the position regarding descriptive and generic marks and the criteria that must be met in order to impugn a mark on these grounds.