If you have been keeping up to date with our reading room, you will likely be aware of the recent trade mark dispute between Puma and Nike over the term ‘footware’. The latter refers to tech-operated trainers, which Nike wished to use for its tech-embedded shoes. However, competitor Puma tried to oppose the registration of the trade mark as they stated that the mark is a clear combination of ‘footwear’ and ‘software’ or ‘hardware’, thus was not indicative of the source of the goods and should not be exclusive to Nike.
It has now been revealed that the High Court of Justice sided with Nike on Thursday after Mr Justice Zacaroli dismissed Puma’s appeal. In determining that ‘footware’ is not an “ordinary descriptive term for the goods and services”, it was established that the UKIPO’s Hearing Officer did in fact “carry out the necessary assessment across the whole range of goods and services”. It was ultimately concluded that the term in question would be considered descriptive of the goods and services.
Additionally, Puma stated in their appeal that had the Hearing Officer “considered notional and fair use in relation to the area of specifications where Puma contends that the mark is descriptive, she could only have reasonably concluded that the mark was descriptive”. This was not found relevant, however, since the Hearing Officer did consider the whole array of goods and services. Puma’s appeal has been dismissed and they may now seek intervention from the Court of Appeal.
If you have any queries regarding the above article or would require assistance with a trade mark, please do not hesitate to get in touch with a member of our expert solicitor team at Lawdit today.
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