In Puma v Nike, the High Court has upheld the decision of a UK Intellectual Property Office (UKIPO) Hearing Officer to reject Puma’s opposition to Nike’s application for the trade mark ‘FOOTWARE’ in respect of goods in class 9 (such as software and hardware) and services in classes 38 (such as telecommunications services) and 42 (such as cloud computing services). Nike's intention is to use the mark for footwear with embedded technology. Puma failed to overturn the UKIPO decision that the mark was sufficiently distinctive to be registered, and that it was neither descriptive nor customary in the relevant trade. This decision confirms the importance of careful consideration of the specific goods and services in question when assessing the descriptiveness or otherwise of a trade mark. It also reaffirms the relative difficulty of overturning a first instance UKIPO decision, which requires an error of principle to be identified. Notably, Nike has also filed a number of international trade mark applications for 'FOOTWARE', including in the US, which is under opposition from Puma (and another entity called San Antonio Shoe, Inc.). A European Union Trade Mark registration is also the subject of cancellation proceedings brought by Puma.
In March 2019, Nike filed a UK trade mark application for the mark ‘FOOTWARE’, covering goods in class 9 (a range of software and hardware) and services in classes 38 (telecommunications services) and 42 (cloud computing and other related services). Puma opposed the application under sections 3(1)(b), (c) and (d) of the Trade Marks Act 1994, on the grounds that the mark was (i) non-distinctive, (ii) descriptive, and (iii) customary in the current practices of the relevant trade. In rejecting Puma’s opposition, the UKIPO Hearing Officer’s decision largely turned on the fact that: (1) the ‘FOOT’ element of the mark was considered distinctive in relation to the relevant goods and services, and (2) whilst the ‘WARE’ element was descriptive, save for the telecommunications services (as it denotes e.g. hardware and software), overall the mark was sufficiently distinctive. Although the average consumer may infer that ‘FOOTWARE’ refers to hardware or software related to footwear, this meaning was found not to be immediately recognisable and required some effort or imagination on the part of the consumer. Puma’s further arguments that (i) ‘FOOTWARE’ was an obvious misspelling of ‘footwear’, and that (ii) the term is used descriptively by other traders, were also dismissed.
High Court decision
The High Court has now upheld the UKIPO Hearing Officer’s decision. Puma’s main argument on appeal was that the Hearing Officer had failed to consider the notional and fair use of the FOOTWARE mark across the range of goods and services covered by the application. Had the Hearing Officer done so, Puma argued, she would have found the mark to be descriptive in relation to at least a portion of the specification. In short, Zacaroli J found that the Hearing Officer had correctly carried out the necessary assessment across the full range of goods and services, including the subset relied upon by Puma. The Hearing Officer identified this subset as "software, hardware and firmware having "some application in footwear with embedded technology"". Puma had therefore failed to establish a distinct and material error of principle by the Hearing Officer. Further, the Hearing Officer had not erred in finding that the word ‘FOOT’ was distinctive in relation to the relevant goods and services, and the approach of considering this element of the mark in isolation was valid, as it was merely a ‘stepping stone’ to her decision on the mark as a whole. As such, the appeal was dismissed and the ‘FOOTWARE’ mark will be allowed to proceed to registration in the UK.