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Puma loses appeal against Nike

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The decision in PUMA SE v Nike Innovate CV was handed down on 27 May 2021. The England and Wales High Court dismissed Puma’s appeal and upheld the United kingdom’s (UK) Intellectual Property Office (IPO) Hearing Officer’s November 2020 verdict.

Nike applied to register the word “FOOTWARE” as a UK trade mark in March 2019. The trade mark was registered in classes 9, 38, and 42, which includes telecommunications services, computer software and hardware and cloud computing services.

The UK IPO accepted the application, but Puma opposed it on the grounds that it was descriptive, non-distinctive, and a common descriptor.

The UK IPO’s Hearing Office dismissed Puma’s opposition in November 2020, finding that the trade mark was not descriptive or customary in relation to the goods and services applied for.

At the England and Wales High Court, Mr Justice Zacaroli affirmed that Nike’s FOOTWARE mark is not descriptive or customary. He stated that, “The Hearing Officer did carry out the necessary assessment across the whole rang of goods and services”.

“The Hearing Office concluded that ‘FOOT’ was not descriptive of any goods or services for which registration is sought but concluded that ‘FOOTWARE’ would not be considered descriptive of such services”.

“It is clear that the Hearing Officer considered the full range of possible goods and services for which registration was sought, including the very sub-set relied on by Puma, and concluded that neither ‘FOOT’ nor ‘FOOTWARE’ was descriptive of any of them”.

Justice Zacaroli rejected Puma’s argument that FOOTWARE would be seen as a misspelling of footwear which could have made it descriptive.

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