On 14 March 2019, Nike Innovate CV (Netherlands) applied to register the word mark FOOTWARE as a UK trade mark for a range of goods and services in Classes 9, 38 and 42. The goods and services covered were all of a technical nature and not sports / sports apparel related.
Puma SE opposed the application on inherent grounds – Sections 3(1)(b) (that the mark was not distinctive), 3(1)(c) (that the mark was descriptive) and 3(1)(d) (that the mark was a generic term in 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 that utilised software and internet connectivity.
The Hearing Officer rejected Puma’s opposition. The Hearing officer considered that the main aspect of Puma’s opposition was the argument that the mark was descriptive, and she concluded on this point that while consumers would almost certainly understand the mark ‘FOOTWARE’ as a play on the word ‘FOOTWEAR’, with the ‘WARE’ misspelling bringing to mind ‘software’, she felt that the mark stopped short of being directly descriptive:
“Clearly, software, hardware and firmware have some application in footwear with embedded technology. … The difficulty I have is that I doubt that the use of “FOOTWARE” would be considered descriptive of such services. It seems to me that whilst the average consumer may ultimately deduce that “FOOTWARE” means software or hardware (or related services) for footwear, specifically footwear with embedded technology, it is not a meaning which is immediately apparent or easily recognisable without some stretch of the imagination”.
Puma’s grounds under Sections (b) and (d) were dealt with quickly, the Hearing Officer concluding that the play on words made the mark memorable and therefore distinctive, and that the evidence adduced by Puma was not sufficient to show that the mark was or had become generic.
Puma appealed to the High Court. Puma’s main argument was that the Hearing Officer had failed to consider notional and fair use of the trade mark 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 properly considered this, Puma argued, she would have concluded that the mark was descriptive.
The 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. There must also be a sufficiently direct and specific relationship between the sign and the goods and/or services at issue. 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, in the context of notional, rather than actual, use. The fact that she had not specifically used the phrase “notional and fair use” in her assessment was irrelevant, as it was clear from her decision that this was taken into account. In particular, the Court found that the Hearing Officer had given specific consideration to the goods for which Puma considered the mark descriptive – footwear with embedded technology – and had provided suitable reasons for considering that the mark FOOTWARE was not descriptive of these.
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. The Court also found that 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.
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. As such, the appeal was dismissed.
While a relatively straightforward decision, the case is a good reminder of the difficulties in overturning a reasoned decision on appeal. Mr Justice Zacaroli considered that Puma’s appeal largely amounted to a “submission that a different conclusion would have been preferable” rather than pointing to a material error in law. Puma’s appeal was therefore never likely to gain traction with the Court. The decision is also a useful guide in relation to the assessment for descriptiveness in the UK, and the relationship that must exist between the trade mark and the goods and services applied for. The case also reiterates that when dealing with neologisms or portmanteau words, it is the assessment of the word itself, rather than the sum of its parts, that is determinative.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.