20 July 2021
Puma SE, the Puma shoe manufacturer, objected to the application for registration of the FOOTWARE trademark in the UK submitted by Nike Innovate CV for goods class 9 and service classes 38 and 42 for the types of goods and services covered, all of which were technical in nature with regard to hardware and software not related to sports/sports wear.
The application for registration was later met with opposition from Puma on the grounds that the mark had no distinguishing power, was descriptive in nature and was a general term in trade, Section 3 (1) letters b, c and d of the British Trademark Law 1994. by Puma SE is that the FOOTWARE brand which has the same sound and pronunciation with the word FOOTWEAR (footwear) which describes footwear with “ware” technology or ‘smart’ footwear that utilizes software and internet connectivity.
Puma SE’s objection was rejected by the examiner. The examiner considers that the main aspect of the objection raised by PUMA SE is that the FOOTWARE brand is considered descriptive. Meanwhile, the FOOTWARE brand is a play on words from the word FOOTWEAR by changing the word wear into ware which is reminiscent of computer equipment (software, hardware and firmware). Although the FOOTWARE brand has the potential to remind consumers of hardware/software for footwear or embedded in footwear but it is not an immediately visible or easily recognizable meaning without certain limitations (imagination).
Furthermore, related to the brand was considered a common word but the examiner concluded that puns made the mark memorable and distinctive. Nor can Puma provide sufficient evidence to show that the FOOTWARE brand is or has become generic. Puma appealed to the High Court. But the high court rejected the appeal filed by Puma SE.
Regarding descriptive brands in Indonesia, descriptive brands are brands that describe the quality, content, effects or other characteristics of the product, so that consumers understand the meaning of the brand without the need for imagination. An example of a descriptive brand is “Delicious Biscuits” for a type of biscuit item and describes the biscuit as delicious. The regulation of descriptive marks is in Article 20 of Law Number 20 of 2016 which states that a mark cannot be registered if it is the same as, related to, or only mentions the goods and/or services for which registration is requested and/or does not have distinguishing features. The exception to descriptive brands from being listed is to add additional meaning.
Also read: Secondary Meaning as a Descriptive Brand Rescuer for Registered
The case of the FOOTWARE brand provides an illustration for the use of a brand that comes from combining words which then creates new words that are similar in pronunciation to existing words. The word “foot” with “ware” is at first glance like a combination of words (footwear with soft/hardware) which then gives rise to the new word “footware” which is similar in pronunciation to “footwear”.
The use of the FOOTWARE brand by Nike for the types of goods and services which are hardware/software that is technical in nature and does not describe footwear, so it is not a descriptive brand. The types of goods and/or services covered in the application for registration of the mark do not clearly state their use in footwear, but only technical matters such as modules, software/hardware and telecommunications services, namely data transmission through telecommunications networks, wireless communication and Internet, Application service provider featuring application programming interface (API) software for third party application integration to enable interactive user experience etc.
Feel free to contact Am Badar & Am Badar if you have any questions regarding whether the brand you are using is descriptive or not, our experienced consultants will be happy to assist you.
