Smart move?

19th Aug 2021

Katharina Barker raises some interesting questions about future defensibility.

This is Puma’s appeal against a UK IPO opposition decision in which the Hearing Officer (HO) rejected Puma’s opposition to Nike’s FOOTWARE application in respect of goods and services in class 9. (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); class 38 (telecommunication services); and class 42 (application service provider [services]; cloud computer featuring software [services]; providing temporary use of non-downloadable cloud-based software [services]).

Puma’s original opposition, filed in November 2020, was based not only upon s3(1)(b) and (c) of the Trade Marks Act 1994, but also included a “common descriptor” ground under s3(1)(d). In its statement of grounds, Puma claimed that:

“Footware” was an ordinary descriptive term for relevant goods and services and failed therefore to possess sufficient distinctive character for registration. It was not striking, surprising, unusual or arbitrary.
The mark is an obvious portmanteau combining “footwear” and “hardware” or “software”, and these goods were claimed in the application. Therefore, the mark was descriptive of the kind of goods and services.
The mark has become a common descriptor of relevant goods and services and is now customary in the relevant trade.

In the decision, the HO concluded that “foot” was not descriptive of any of the goods or services for which registration was sought and was therefore distinctive. She accepted that “ware” was not inherently distinctive in relation to goods in class 9 or services in class 42, as it may be perceived as referring to software, hardware or firmware. However, “footware” is not a combination of two non-distinctive elements where the combination fails to amount to more than the sum of its parts. She also concluded that “ware” was distinctive in relation to the services in class 38.

While the HO permitted Puma to advance an additional argument that “footware” is an obvious misspelling of footwear, she rejected this argument. She concluded that the term is a neologism which changes the meaning and requires some mental effort on the part of the consumer.

As to the question of descriptiveness of the term “footware” as a whole, the HO accepted that the term was likely to be perceived as a play on the word “footwear” and that software, hardware and firmware have some application in footwear with embedded technology.

It was also noted that the evidence included a number of footwear products, mainly sports shoes, that feature computer technology to collect data, but that there was no evidence of the term “footware” being used to describe any of the relevant goods or services. The HO concluded that the evidence provided in relation to “smart” footwear did not constitute use of the mark in relation to the contested goods and services.

In terms of the evidence provided by Puma in relation to s3(1)(d), the HO noted that there was only limited evidence of the term “footware” in use in the UK, and still less evidence of its use in relation to any of the goods or services at issue. It was concluded that the evidence was wholly insufficient to establish that use of the term had become customary in the trade for any of the contested goods or services at the relevant date.

Appeal grounds

Puma appealed on the following grounds:

With regard to s3(1)(b) and (c), it stated that the HO erred in failing to consider the notional and fair use of the trade mark across the full range of its very broad specification of goods and services.
Further, it claimed that had the HO considered notional and fair use in relation to the goods and services where Puma contended that the mark is descriptive, she could only have concluded in agreement with Puma.
Finally, with regard to s3(1)(d), Puma contended that the HO again erred because she failed to consider notional and fair use of the mark, which included use in relation to footwear products.

Puma did not challenge on its appeal any of the findings of primary fact.

There was no dispute between the parties as to the relevant legal principles, and so registrability of the mark needed to be assessed, first by reference to the goods or services in respect of which registration had been applied for and then by reference to the relevant public’s perception of the mark.

In his decision, Mr Justice Zacaroli stated that, ultimately, the question was whether the mark applied for, when notionally and fairly used, was descriptive of the goods and services at issue within the meaning of s3(1)(c). A sign can be refused registration only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of the characteristics in s3(1)(c). Moreover, a sign will be descriptive “if there is a sufficiently direct and specific relationship between the sign and the goods and services in question to enable the public concerned immediately to perceive, without further thought, a description of one of the characteristics of the goods and services in question”.

Section 3(1)(c)

With regard to Puma’s first contention that the HO failed to apply the “notional and fair use” of the trade mark across the whole range of goods and services for which registration was sought, Mr Justice Zacaroli noted that the HO had carried out the necessary assessment.

Further, it was pointed out that the HO had quoted the principles of Starbucks (HK) Ltd v British Sky Broadcasting Group plc¹, including that the signs referred to were “merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought” and the concept of notional, not actual, use.

He recognised that the HO had identified the precise subset relied upon by Puma (software, hardware and firmware having “some application in footwear with embedded technology”) but concluded that the term “footware” would not be considered descriptive of such goods and services. He was satisfied that the HO had considered the full range of possible goods and services for which registration was sought, including the subset relied upon by Puma, and therefore concluded that neither “foot” nor “footware” was descriptive of them.

In addition, Mr Justice Zacaroli dismissed Puma’s argument that “footware” was simply a misspelling of “footwear” and therefore descriptive of footwear with embedded technology. No error of principle in the HO’s decision could be found.

Finally, the evidence relied on as to the use of “footware” in other contexts was rejected as it did not show descriptiveness in relation to footwear embedded with technology.

Section 3(1)(d)

With regard to Puma’s contention that the evidence in the case shows the use of “footware” in the UK in relation to all of the class 9, 38 and 42 goods and services, such that the trade mark has become customary in the trade for all of those goods and services, Mr Justice Zacaroli found that there had been no error of principle and that the HO had considered all of the evidence. It was further noted that most of the evidence was not from the UK and was therefore irrelevant to the argument under s3(1)(d).

Mr Justice Zacaroli therefore dismissed the appeal, although at the time of writing it remained to be seen whether Puma would take the matter to the Court of Appeal.

This case shows that a mark that would likely be descriptive for footwear can be eye-catching and innovative for the complementary goods and services included in Nike’s application. Whether Nike goes on to use the FOOTWARE mark on “smart” shoes remains to be seen, but the decision does lead to some speculative questions.

If Nike encounters competitor use of FOOTWARE on “smart” shoes, it now seems to be in at least an arguable enforcement position due to its registration of the mark on ancillary goods and services. It may have been a smart move not to put “footwear” in its description of the goods, so as to avoid a finding that the mark was descriptive on those goods. As it is, there is no such finding, and so any competitor wishing to use FOOTWARE on shoes – specifically “smart” shoes – would have to work harder to establish a defence on descriptiveness or non-distinctiveness.

¹ [2012] EWHC 3074 (Ch)

Key points

The case shows that an eye-catching and seemingly simple mark that, on the face of it, is descriptive, can be registered if an owner is careful about which goods and services are included
Whether Nike will go on to use the FOOTWARE mark on smart shoes themselves remains to be seen