Background: Nike Inc. faced legal challenges in its attempt to secure the trademark “FOOTWARE” for hardware and software associated with sneakers. The General Court of the European Union recently upheld a prior decision by the EU Intellectual Property Office (EUIPO) invalidating Nike’s trademark registration from 2019, deeming the mark descriptive.

Key Issues:

• Descriptiveness: The court found “FOOTWARE” descriptive of the goods and services listed in Nike’s application. This decision stemmed from a challenge by Puma, which argued that the term was generic and descriptive, thus not eligible for trademark protection.
• Board of Appeal’s Ruling: The EUIPO’s Fifth Board of Appeal sided with Puma in January 2023, determining that “FOOTWARE” directly referenced the intended purpose of the products, specifically technology-related footwear.
• Relevant Public Perception: The Board assessed that both average consumers and professionals would see “FOOTWARE” as synonymous with “footwear,” reinforcing its descriptive nature.

Legal Proceedings:

• Nike’s Appeal: Nike contested the Board’s interpretation, claiming it improperly limited the analysis to the public’s perception of “FOOTWARE” as a misspelling of “footwear.”
• General Court’s Decision: The court dismissed Nike’s appeal, referencing EU case law that requires trademark rejection if any possible meaning describes a characteristic of the goods or services. The court agreed with the Board’s assessment of the term’s descriptiveness.

Implications:

• EUIPO’s Evidence: Evidence showed that at the time of Nike’s application, the market already had products like “smart shoes” incorporating technology, supporting the descriptiveness finding.
• Cancellation and Future Appeals: The General Court upheld the Board’s decision to cancel Nike’s trademark registration. Nike may appeal to the EU’s highest court.

Related Proceedings:

• United States: Earlier this year, the Trademark Trial and Appeal Board also ruled against Nike, finding “FOOTWARE” merely descriptive and incapable of acquiring distinctiveness. Nike subsequently abandoned its application.
• United Kingdom: Contrarily, the High Court in London upheld Nike’s trademark registration in the UK in May 2021, and the mark was registered in May 2022.

Contact Revomark for assistance with your Trademark Registrations.