July 14, 2021
Puma SE opposed an application by Nike Innovate CV to register a UK word mark for FOOTWARE for various goods and services in Classes 9, 38 and 42, including software and hardware. The opposition was based on the general notion that the application mark was descriptive and lacked distinctiveness under s 3(1) of the Trade Marks Act 1994. In particular, Puma argued that: (i) under s 3(1)(c), the mark was an obvious portmanteau of “footwear” and “hardware” or “software” and therefore the mark was descriptive of the kind of goods and services covered by the application; and (ii) under s 3(1)(d), the mark had become a common descriptor of the goods for which registration was sought and was now customary in the relevant trade.
The Hearing Officer rejected Puma’s opposition, finding, inter alia, that FOOTWARE was not a combination of two non-distinctive elements that amounted to no more than the sum of its parts. She said that whilst the average consumer might ultimately deduce that FOOTWARE meant software or hardware 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”. She also found that Puma’s evidence on the use of FOOTWARE in the UK was wholly insufficient to establish that the mark had become customary in the trade for the goods or services in question. Puma appealed to the High Court.
Mr Justice Zaccaroli rejected Puma’s argument that the Hearing Officer had failed to consider the “notional and fair use” of the mark across the full range of its goods and services for which registration was sought, in particular in relation to footwear with embedded technology.
Zaccaroli J agreed that the Hearing Officer had not actually used the phrase “notional and fair use”, but said that there was no reason for her to have done so. She had set out the substance of the “notional and fair use” test derived from European case law and she had quoted from Starbucks (HK) Ltd v British Sky Broadcasting Group Plc  EWHC 3074 (Ch), which summarised the principles and concept of notional use.
She had concluded that FOOT was not descriptive of any of the goods or services for which registration was sought and had identified that software, hardware and firmware had “some application in footwear with embedded technology”. However, she had concluded that FOOTWARE would not be considered descriptive of such services.
Puma also said that the Hearing Officer’s finding that WARE was not descriptive of any services in Class 38 was not supported by evidence. Zaccaroli J agreed that it was not entirely clear why the Hearing Officer had reached that conclusion, but that it was irrelevant to the finding on the critical issue that FOOTWARE was not descriptive of any of the goods and services in any of the classes in any event. This was demonstrated by the fact that although the Hearing Officer had found WARE to be descriptive in relation to Classes 9 and 42, she had then found that FOOTWARE was not descriptive in relation to either of those Classes.
Puma also contended that FOOTWARE was basically a mis-spelling of “footwear”, which would be descriptive of software and hardware in relation to footwear with embedded technology. Zaccaroli J said that Puma had not actually identified any error of principle in presenting this argument. The situation was very far removed from the case Puma relied on, Case T-640/11 Boehringer Ingelheim International GmbH v OHIM, in which the word RELY-ABLE was held, notwithstanding the mis-spelling, to be immediately perceived and understood by the relevant public as meaning “reliable”, which was a description of at least part of the goods and services in question. In this case, even if the spelling mistake was corrected, the word was still not descriptive of any of the goods and services. Indeed, with the spelling corrected, it lacked the play on words that the Hearing Officer had noted would lead (albeit not immediately and not without mental gymnastics) the average consumer to link it to software used in technology embedded in shoes.
Finally, Puma relied on evidence as to the use of “footware” in other contexts. This was the same evidence as that relied on under s 3(1)(d) (see below). For example, Puma relied on a web page relating to a patient record system for podiatrists, chiropodists and other foot health professionals, entitled “footware”. The Hearing Officer had found that the use was in relation to a record system and was therefore not descriptive use at all, and certainly not descriptive of software. Zaccaroli J agreed. For example, in terms of the electronic record system for podiatrists, such “brand use” did not help establish that a mark consisted exclusively of signs or indications that served to indicate the kind or quality or other characteristics of goods.
Puma contended that the evidence on the use of “footware” in other contexts showed that the mark had become customary in the trade for the goods and services in question. However, when asked what error of principle was said to have been made by the Hearing Officer, Puma said that it could not improve on the contention.
Zaccaroli J concluded that this was essentially an appeal against a finding of fact, albeit one that was based on the documents presented. The Hearing Officer had considered (and carefully analysed) all of the evidence and had noted that most of it was not from the UK and was therefore irrelevant to s 3(1)(d). Overall, she had found that it was insufficient. Puma did not contend that the Hearing Officer’s conclusion was not supported by the evidence, or was based on a misunderstanding of the evidence, or was one which no reasonable tribunal could have reached. There was accordingly no reason to interfere with that conclusion.
The appeal was dismissed. (Puma SE v Nike Innovate CV  EWHC 1438 (Ch) (27 May 2021) — to read the judgment in full, click here).