Back in May 2021, Mr Justice Zacaroli dismissed the appeal of Puma SE (Puma) who were opposing the trademark “FOOTWARE” registered by Nike Innovate C.V. (Nike). The suit was based on classes 9, 38 and 42, all of which concern a variety of technological and computer-based goods and services established by the Nice Classification which outlines trademarks.
In any trademark case, a mark must be said to fulfil s 1 of the Trade Marks Act 1994: the statutory requirement of “distinguishing goods or services of one undertaking from those of other undertakings”. In this case, Puma was appealing over the application of absolute ground provisions set out under ss 3(1)(b), (c), and (d) by the Hearing Officer in the lower court; these provisions intend to completely halt the registration of a trademark. They can cover marks that are “devoid of any distinctive character”, depict characteristics of the goods or services or have become “customary in the current language” or in the specific industry. The Judge spent a significant time considering ss 3(1)(c) and (d) in particular, along with Puma’s submission that the Hearing Officer did not properly consider the spectrum of goods and services applied for by Nike in relation to the trademark.
In his analysis regarding s 3(1)(c), Justice Zacaroli held at paragraph 26 of the judgment that the wide array of possible goods and services were considered and the Hearing Officer “concluded that neither “FOOT” nor “FOOTWARE” was descriptive of any of them”. Crucially, he highlighted how the conclusion would have been different had the registration been goods and services concerning actual footwear. He particularly held at paragraph 30 that the “play on words” allowed for “the average consumer to link it to software to be used in relation to embedded technology in shoes”. As reported in The Fashion Law, Justice Zacaroli found that the Hearing Officer considered the spectrum of goods and services and even considered where the term “FOOTWARE” was perceived to be a misspelling of the word footwear.
On the point of appeal concerning the Hearing Officer’s analysis, Zacaroli J found no error in the interpretation of the evidence presented to the Hearing Officer. Only in relation to class 38 was it held that the evidence was not as strong in supporting the distinctiveness of the registered trademark. However, as Myra Sae-Heng states
“The Judgment made clear that if a party is unable to show an error in principle, for example that the Hearing Officer misunderstood the evidence and in doing so, reached the wrong conclusion, then an appeal to the High Court is unlikely to be successful”.
In regard to s 3(1)(d), the counsel for Puma Mr Campbell QC was unable to improve upon the submission that the phrase “FOOTWARE” had become commonplace, as shown in a witness statement in relation to classes 9, 38 and 42. This was due to the lack of evidence supporting this assertion by Puma.
This judgment raises two broader legal questions: what perspective should the courts apply when assessing word marks in relation to classes and what evidence is necessary to support a particular perspective? Particularly in returning to s 1, the courts have often considered whether or not words in combination are “inventive” enough as to warrant trademark protection. This fulfils s 1 as it provides the word mark the capacity to distinguish itself from others. Most famously this occurred in the case of Procter & Gamble Company v. Office for Harmonisation in the Internal Market. The Court of Justice of the European Union (CJEU) had to consider the mark “BABY-DRY” and whether or not the mark should be allowed to be registered. The CJEU held at paragraph 44 that the mark in question could not be considered as descriptive as it was a “lexical [invention] bestowing distinctive power on the mark”. On this basis, the application was successful.
In a similar vein, the mark “FOOTWARE” was seen by Justice Zacaroli as a clever application of language, denoting the unification of shoes and technology. Specifically in relation to the classes applied for, the Judge held that the average consumer would see the trademark as non-descriptive and instead perceive it to be distinguishing Nike’s specific brand of technology-based footwear.
Yet, in coming to this conclusion, the courts could be open to a greater number of appeals due to the notional perspectives applied in trademark law. Justice Zacaroli’s judgment may have altered if he had considered a more well-rounded perspective to analyse the evidence provided by Nike as the responding party tasked with overcoming the challenges set out in ss 3(1)(c) and (d). As already set out, the courts test of the average consumer could be developed to consider whether the decision made is reflected in public engagement with a mark. This could be defined as creating an “informed consumer” which incorporates specific evidence of public engagement with a mark. In turn this would provide more security for judgments dealing with grounds of refusal. This perspective is still likely to support the conclusion of Justice Zacaroli; as submitted in the appeal, there is something inventive about the combined trademark of “FOOTWARE” that an “informed consumer” test would still likely recognise. Nike may have even coined this phrase.
However, the term may lack significant distinctiveness to truly fulfil the base principle set out in s 1 of the Trade Marks Act 1994. The Judge held at paragraph 31 that simple use of a brand “does not help to establish that a mark consists exclusively of signs or indications” as defined under s3. However, the phrase “FOOTWARE” may be perceived by an “informed consumer” as simply denoting footwear that incorporated some form of technology and not specifically distinguishing Nike’s goods. Therefore, it would have fallen foul of s3. This shows how the application of different perspective and the level of evidence required can drastically alter the outcome of cases.
While this case may appear at first to be another in a long list analysing word marks, it again begs the question: what is the best consumer viewpoint to apply in court? As proprietors coin a greater number of phrases, an “informed consumer” test could better ensure that the mark continues to distinguish a proprietor as the origin of a good or service as it recognises a more realistic interaction between a consumer and a trademark.