Puma SE v Nike Innovate CV

Registrability must be assessed against the goods and services covered by the application and the perception of the relevant public. The assessment must address the full specification, including any relevant sub-set of goods or services. A sign is descriptive only where there is a sufficiently direct and specific relationship with the goods or services enabling the public immediately, and without further thought, to perceive a relevant characteristic. On appeal, a multifactorial assessment by the Registrar should be respected unless there is a distinct and material error of principle or the decision is unsupportable. Evidence showing trade mark use of a term does not establish that it is customary or descriptive of the goods or services.

Nike Innovate C.V. applied to register the word mark FOOTWARE for goods and services in classes 9, 38 and 42. Puma SE opposed registration under sections 3(1)(b), (c) and (d) of the Trade Marks Act 1994, arguing that the mark was non-distinctive, descriptive of software or hardware for footwear, or customary in the trade.

The Registrar’s Hearing Officer rejected the opposition in decision O-415-20. Puma appealed to the High Court, alleging that the Hearing Officer had failed to assess notional and fair use across the full specification and had reached conclusions unsupported by the evidence. The central issues were whether FOOTWARE was descriptive or customary in relation to any of the goods or services.

1. Appeal dismissed. The Hearing Officer had considered the full range of goods and services, including the sub-set involving footwear with embedded technology. Her failure to use the label “notional and fair use” did not show a failure to apply the substance of that test.
2. Registrability had to be assessed by reference to the goods or services applied for and the perception of the relevant public. If the specification included a sub-set for which the mark was descriptive under section 3(1)(c) of the Trade Marks Act 1994, the opposition would succeed unless the specification was amended.
3. The applicable threshold was whether the mark, when notionally and fairly used, had a sufficiently direct and specific relationship with the goods or services so that the relevant public would immediately perceive, without further thought, a description of a characteristic. The Hearing Officer was entitled to conclude that FOOTWARE was not descriptive, even though consumers might ultimately understand it as a play on FOOTWEAR linked to technology used in footwear.
4. The Hearing Officer’s conclusion that FOOT was not descriptive, and her ultimate conclusion concerning FOOTWARE, involved evaluative and multifactorial judgments. Puma identified no distinct and material error of principle. A disagreement about the preferable outcome was insufficient. Any weakness in the reasoning concerning WARE and class 38 was immaterial because the decisive conclusion was that FOOTWARE was not descriptive of the goods or services in any class.
5. The evidence of use of FOOTWARE did not establish customary trade use under section 3(1)(d). The Hearing Officer had carefully analysed the evidence, most of which was outside the United Kingdom. Her conclusion was a finding based on the evidence, and no recognised basis for appellate interference was shown. Use of the term as a brand did not establish descriptive use under section 3(1)(c).

The opposition therefore failed and the appeal was dismissed.

• High Court (Chancery Division): Appeal from the Registrar’s Opposition decision O-415-20 dismissed.