Puma & Nike: A dispute on FOOTWARE [Case T‑130/23]

Nike had an EU trade mark no. 018035847 for ‘FOOTWARE’, to which Puma filed an application for a declaration of invalidity stating that Nike’s trade mark lacked distinctive character, was descriptive and was generic.

The EUIPO’s Board of Appeal declared the trade mark invalid on the ground of descriptiveness which in turn led Nike to bring the action to the General Court.

General Court

The General Court confirmed the Board of Appeal’s decision, namely that a significant part of the relevant public would understand the term ‘FOOTWARE’ as ‘footwear’, as it may perceive the same as either a misspelling or directly interpret it as ‘footwear’.

In its decision, it held that a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or service. To this end, the General Court relied on OHIM v Wrigley, C‑191/01 (the “Wrigley Case”). Applying the Wrigley Case to these facts, the General Court held that the relevant English-speaking public would perceive the sign as ‘footwear’.

Briffa Comment

In this case, the General Court has seemingly adopted a broad interpretation of the Wrigley Case, given that the Court requires the meaning of the sign to designate a characteristic of the goods itself.

In this case, the sign term ‘FOOTWARE’ does not designate a characteristic of the word ‘FOOTWEAR’, as it relies on the consumer interpreting the same as a misspelling of ‘footwear’ – which is not a certainty.

Moving forwards, brands applying for trade marks will need to be wary of applying for misspellings of descriptive terms – given the wider interpretation of case law adopted in this case.

The litigation landscape for trade marks is rapidly evolving and is one that Briffa is well placed to assist with, having assisted clients in the trade mark litigation space for over 25 years.