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The “FOOTWARE” Trademark Dispute

The “FOOTWARE” Trademark Dispute

In a significant trademark dispute, Puma has filed an application for cancellation of the Nike’s registered trade mark “FOOTWARE,” aiming to prevent Nike from using the mark. Both companies have appeared in the European General Court (constituent of Court of Justice in European Union) for hearing of appeal surrounding Nike’s trade mark application.

The dispute arose from Nike’s innovative ‘Smart Shoes,’ which are self-lacing tech driven sneakers that can be controlled via a smart device. Seeking to protect this technology, Nike filed an application to register the term “FOOTWARE” as a trade mark.

Background

Nike Innovate CV on 14th March, 2019 acquired trade mark registration for EU trade mark no: 018035847 “FOOTWARE” under Class 9, Class 38 and Class 42 of the classification of goods and services.

Class 9 of the Classification of Goods and services concerns with – ‘Computer hardware modules, electronic devices, software drivers, computer software and firmware used for allowing electronic drivers to share date and communicate with each other.’ Class 38 of the Classification of Goods and Services concerns with – ‘Telecommunication service’. Class 42 of the Classification of the Goods and Services concerns with – ‘Application service provider featuring API, cloud computing for connecting, operating and managing networked devices.

On March 19, 2020, Puma SE filed an application with the European Union Intellectual Property Office (EUIPO) seeking invalidation of the EU trademark “FOOTWARE”. Puma’s grounds for invalidation were based on Article 59(1)(a) of the European Union Trademark Regulation (EU) 2017/1001, read with Article 7(1)(b) to (d). Puma argued that the trademark “FOOTWARE” was devoid of any distinctive character [Article 7(1)(b)] and was descriptive of the goods and services [Article 7(1)(c)].

Proceedings and Decisions

The application of declaration of invalidation was rejected by the cancellation division on October, 2021. The cancellation division held that the word plays between the beginning of the word FOOTWEAR and end of the word of SOFTWARE when combined together to form the Trade Mark “FOOTWARE” is adequate to confer the mark with minimum distinctive character for goods falling under the Class 9, 38 and 42.

On 20th December, 2021, Puma filed an appeal against the decision of cancellation board with the EUIPO Board of Appeal (BoA). The Board of Appeal ruled in favour of Puma and held that the trade mark “FOOTWARE” is invalid under Article 7(1)(c) of the Regulation on the ground that the aforesaid trade mark is descriptive in nature with regards to good and services.

Against the decision of the Board of Appeal, Nike subsequently brought the case to the General Court. Nike argued that the Board of Appeal in its judgement has misrepresented the term “characteristic” under the meaning of Article 7(1)(c). Nike further argued that the Board of Appeal has relied on a general reasoning and therefore wrongly assessed the perception of general public with regards to the contested mark.

Rationale of the Court

On 12th June, 2024 the General Court rejected the pleas of Nike and dismissed the action upholding the decisions of the Board of Appeal. The court held that the Board of Appeal was right in holding the decision that the term ‘FOOTWARE’ when read as ‘FOOTWEAR’ provided information regarding the intended purpose of the goods and services covered by the contested mark and therefore, it was descriptive of those goods and services.

The court observed that the trade mark ‘FOOTWARE’ which could also be read as ‘FOOTWEAR’ is descriptive of software and computer hardware for purpose of transmitting, receiving, processing, storing of data under Class 9. The court further observed that it is plausible that the average English-speaking consumers could perceive the trade mark as a goods relating to footwear based wearable sensor or other systems. Hence, the trademark is considered descriptive of the intended purpose of the kind of goods and services.

The court concluded that since all goods and services under the contested trademark could be used for connected shoes, the mark “FOOTWARE” was descriptive for the relevant goods and services.

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