THE “FOOTWARE” TRADEMARK BATTLE BETWEEN NIKE AND

PUMA

INTRODUCTION

The Portland-based footwear brand “Nike” has been innovatively reshaping the sportswear and
footwear industry ever since it came into the market for business. It has been actively and
creatively contributing in the sportswear industry by not limiting itself just to apparel and
footwear but with technologically advanced equipments and gadgets. The current article talks
about the controversy pertaining to one such innovation by Nike- “Smart Shoes”, self -lacing
sneakers, and ones that can be tightened or loosened via a smartphone.

CONTROVERSY

Nike applied for to register the term “FOOTWARE” as trademark, not covering sports shoes but
the Internet of Things (IoT) covered under classes 9, 38 and 42 of nice classification at the UK
Intellectual Property Office (UKIPO).1 These classes include computer software and hardware,
telecommunications services and cloud computing services. Puma SE, its competitor and another
leading brand in sportswear and footwear industry opposed this move by filing an application on
the basis of Sections 3(1)(b), 3(1)(c) and 3(1)(d) of the UK Trade Marks Act 1994 on the
grounds that :-

(i) This mark is ordinary, descriptive expression for footwear and it does not have
sufficient distinctiveness as it is an obvious combination of “footwear” and
“software”. Thus, it does not serve as a badge of origin for the goods and services for
which registration was sought.
(ii) The mark is descriptive as it simply informs that it is hardware/software for foot.
(iii) The mark is a common descriptor as it now customary in this trade and has already
been used by several users.

1
https://www.wipo.int/classifications/nice/en/
The dispute in question revolves around the concept of descriptive trademarks which refer to
those trademarks that are used to denote the domain of the commodity and service with which
the product is associated2. Descriptive names are not allowed to be registered as they are a
common epithet and lack the essential requisite of distinctiveness, they cannot be monopolized
by one particular trading establishment and are subject to common usage by the public at large.
In the present scenario, Puma objected against Nike’s claim for recognition of FOOTWARE as a
trademark as it stated that the term is an ordinary descriptive term used for goods and services in
the industry, especially used to descriptively refer to tech-shoes which involve
hardware/software. However, Nike refuted the objection by describing ‘footware’ to be
specifically connected with tech-driven sneakers and to be used in facilitating users to
interconnect with other smart devices for the purpose of monitoring and managing automated
systems.

The ambit of descriptive terms varies according to the facts involved in the case and the
expression for which the protection is being claimed. The essential condition on which the courts
have relied upon to ascertain the question of descriptiveness is by analyzing the sense for which
the expression was used and the consequential effect that it has upon the consumer base of that
particular sector of goods and services. The recent judicial practice in context of countries like
the United Kingdom emphasizes that the assessment of a descriptive term must be done
generously and only those words that describe the essential characteristics of the product shall be
considered as descriptive terms rather than an extensively interpreting it to be associated with all
vague and simple terms connected to the good or service3.

In the present case, Puma contended that the trademark for the term footware is an attempt by
Nike aimed at potentially restricting other brands from selling tech- shoes i.e. technologically
advanced shoes. Although in this regard the court ruled that the term footware does not have a
clear and manifest meaning and therefore it cannot be held as explicitly descriptive. Furthermore,
it added that there is lack of evidence to establish with conviction that the ordinary consumers
associate the term footware with technologically advanced smart shoes in general. Thereby

2
Godfrey Phillips India Ltd. vs Girnar Food & Beverages Pvt. Ltd 1997 (2) ARBLR 559 Delhi.
3
UK: Descriptive Trade Marks - A Question of Degree By Lindsey Wrenn, available at
https://www.mondaq.com/uk/eu-law/32049/descriptive-trade-marks--a-question-of-degree
highlighting that scrutiny of descriptive words must be construed along with the evidence
regarding its predominant usage and also considering the literal meaning of the word.

The purpose of discouraging the usage of descriptive words by restricting them from being
registered as trademarks is aimed at safeguarding the concept of product distinctiveness.
Unregulated registration of descriptive words as trademarks will enable a single producer to
monopolize a whole sector of goods and services and prohibit new entrants in that sector thereby
effectively eliminating all kinds of competition. Such a practice poses great threat to product
diversity as it ensures a free run for the company that gets the trademark for descriptive words
and also decreases the bargaining power of the consumer base by limiting the overall number of
functionaries in that sector of goods and services.

In the Indian context, Section 9(1) (b) of the Trademark Act, 1999 addresses the issue of
descriptive marks, it outrightly prohibits the registration of such descriptive words or phrases as
trademarks. Additionally, this statutory provision also bars registration of such trademarks that
have turned out to be standard or customary in the present language with reference to a sector of
goods and services. However, this provision is subject to an exception that those specific
descriptive words which have gained certain distinctiveness and a secondary meaning among the
consumers and they associate such words with one particular company or brand, then in those
cases the words or phrases are eligible to be registered as trademarks.

Judicial practice in similar cases involving descriptive marks

The judgement by the court denying the claim on part of Puma and upholding the usage of the
term ‘Footware’ by Nike to be of non- descriptive nature is supported by established judicial
practice. In crossfield's application case it was held that while deciding upon the question of
descriptive words, direct reference should be made to character or quality of the product which is
involved and unless there is impenetrable reasonable evidence the word or phrase cannot be said
to be descriptive4. In the present case there was no substantial evidence to suggest that the term
‘Footware’ is solely capable of signifying the entire sector of technologically advanced smart
shoes. The Yorkshire Relish case is another such prominent instance when the court dismissed
the claim for descriptive words based merely on the ground of similarity with a word in common

4
Crossfield's application (1909) 26 R.P.C. 837
usage5. Nike emphasized upon the distinct purpose of using the term ‘Footware’ that was to
enable the consumers of its tech-shoes to interconnect with other automated smart devices this
argument is further supported by an Indian ruling where the court stated that mere usage of a
word by the defendant that is allegedly also related to the sector of goods and services offered by
the plaintiff is not sufficient for granting relief6, the nature and purpose of the usage should be
such that it can potentially monopolize the sector thereby infringing upon the rights of the
plaintiff.

Another essential test to decide upon the question of descriptive words was mentioned in the
case Aegon Life Insurance Company Case which states that whether the mark by itself without
reference to anything else is sufficient enough to describe any particular characteristic trait or
nature of the product or service7. Application of this test in the present case suggests that the
term ‘Footware’ is in no capacity capable enough to describe any particular characteristic
relating to technologically advanced smart shoes.

5
Powell v. The Birmingham Vinegar Brewery Company, Ld" 14RPC720
6
Stokely Van Camp Inc v Heinz India Pvt Ltd (2010)
7
Aegon Life Insurance Company Ltd vs Aviva Life Insurance Company