The General Court of the European Union has upheld a previous decision that Nike’s ‘FOOTWARE’ trade mark is invalid due to its descriptive nature.
Sportwear giant, Nike, was granted EU trade mark protection for the ‘FOOTWARE’ word mark in 2019, for use on hardware and software related to trainers.
However, in March 2020, German sportwear company Puma filed an application for a declaration of invalidity of Nike’s EU trade mark registration on the basis that it was descriptive of the goods and services against which it was registered.
In January 2023, the matter reached the EUIPO’s Fifth Board of Appeal, which agreed with Puma’s argument that the mark was descriptive against the specified goods and services. The Board determined that the relevant English-speaking public would be likely to “perceive the sign FOOTWARE as meaning ‘footwear’”, a finding which furthered the descriptiveness of the mark.
Nike appealed the above decision with the General Court of the European Union, arguing that the Board should have considered “other possible meanings of the contested mark”. However, on 12 June 2024 the General Court upheld the Board’s earlier decision, finding that the mark was invalid as “at least one of its possible meanings designated a characteristic of the goods or services concerned”. That one possible meaning is descriptive is enough for the mark to be invalid.
It is to be seen whether Nike will appeal this decision.
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