"Ware" - Capable of identifying the source of the goods and services, or a generic or descriptive term

Anyone can register a trade mark in the UK or the EU, providing it is capable of distinguishing their goods or services from those of other traders, they have a good faith intention to use it within the next five years in relation to the registered goods and services and it is not successfully opposed by another party with earlier rights.

The UK and EU Intellectual Property Offices do not examine trade mark applications on relative grounds, that is to say conflicts with earlier rights, only on absolute grounds, to ensure that the mark applied for is capable of acting as a trade mark. However, anyone is entitled to oppose an application on the basis of its earlier rights or on the basis of absolute grounds.

Nike applied to register a trade mark in the UK for FOOTWARE covering, not sports shoes, but the “Internet of things”-related computer software and hardware, telecommunications services and cloud computing in Classes 9, 38 and 42 of the Nice Classification. One assumes that they wished to market some form of “smart” footwear under the mark.

Puma opposed Nike’s application on the basis that the mark was incapable of performing the function of a trade mark or “badge of origin” because:

  1. the mark is an ordinary, descriptive term for and does not possess sufficient distinctiveness to serve as a badge of origin for the goods and services for which registration was sought,
  2. the mark is descriptive because it merely informs consumers that the goods and services in question relate to hardware/software in or for feet and footwear, and
  3. the mark has become a common descriptor of the goods for which registration is sought and is now customary in the relevant trade.

Puma filed evidence in support of its opposition which included a report on the growth of the Internet of Things and its role in sport. Puma also claimed to be the first company to introduce electronic hardware and software into sports shoes, as well as a pair of self-lacing trainers (for what purpose, you might well ask) and other evidence concerning the incorporation of software and hardware in footwear products.

Although references to shoes with embedded technology such as “smart shoes”, “smart running shoes” and “smart sneakers”, with names such as “Fit Intelligence” or “Fi”, “Autodisc” and “Nike+iPod” were apparent in the evidence filed, “Footware” did not appear to be a descriptive term or brand name in use.

There was some evidence of the use of the term “footware” in articles which pre-dated Nike’s application, but the IPO felt that its use, particularly in relation to the goods and services in issue, was limited.

Nike produced evidence of numerous other trade mark registrations which featured the suffix ¬-WARE in the relevant classes and of their use on various websites and evidence that “smart” not “footware” appears to be the name of choice for manufacturers of footwear containing electronic software and hardware. Nike also pointed out that Puma had registered an EU trade mark for SPORTSWARE in the same classes, which makes Puma’s Opposition appear somewhat hypocritical.

The IPO took the view that FOOTWARE was likely to be perceived, in the context of the goods and services in issue, as a play on the word “footwear”, but doubted that the use of FOOTWARE would be considered descriptive of such goods and services. This was not a case of a neologism involving two, common words which might be descriptive of the goods and services to which they are applied in spite of their juxtaposition, but a deliberate misspelling of the term “footwear” which changes the meaning of the word combination. It was also not possible to say that “foot” was a term associated with the goods and services in issue, unlike the word “boot” which has a meaning in relation to computers and electronic goods.

The IPO said that whilst the average consumer might deduce that FOOTWARE means software or hardware (or related services) for footwear, specifically footwear with embedded technology, it was not “a meaning which was immediately apparent or easily recognisable without some stretch of the imagination”.

The IPO also felt that the evidence was insufficient to establish that the use of FOOTWARE had become customary in the trade for any of the contested goods or services at the date of Nike’s application.

Puma therefore lost its opposition on all grounds.

Trade marks are a key asset for any business wishing to protect its brand identity and are particularly important assets for fashion businesses which often market their brands as a lifestyle accessory, but careful thought should always be given to whether any trade mark applied for is capable of identifying the source of the goods and services for which it is protected, rather than being a generic or descriptive term.

The law and practice referred to in this article or webinar has been paraphrased or summarised. It might not be up-to-date with changes in the law and we do not guarantee the accuracy of any information provided at the time of reading. It should not be construed or relied upon as legal advice in relation to a specific set of circumstances.

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