Brands play a significant role in many industries. In the world of casual footwear, whether sneakers, trainers or tackies, it all depends on where you're from, brands are hugely important with many of the biggest and most recognisable brands in the world operating in this space. So let's discuss some recent trade mark issues involving your favourite footwear brands.
NEW BALANCE - Japan
In Japan, a Japanese individual applied to register the trade mark NYAN BALANCE and device in class 25 for apparel and footwear. As you will note from the representation below, the device comprises a cat figure, one that some might feel bears a slight resemblance to a tick or check. There is an explanatory note that reads as follows: 'Nyan is known as the sound cats makes in Japan. Because of it, ''nyan balance'' reminds us of a combination of cat sounds and ''balance''.'
The application was opposed by New Balance Athletics on the basis of the mark's resemblance to NEW BALANCE, a mark that is apparently well-known in Japan. The US company pointed out that the individual who had filed the application for NYAN BALANCE and device had previously sought to register a mark comprising a head of a cat, (the logo of New Balance), as well as the interesting word NYAIKE. A serial copycat perhaps!
Yet, the Japan Patent Office ("JPO") Opposition Board refused to accept that NEW BALANCE is well known in Japan, saying that the evidence filed did not support this. It said that there would be no confusion because the words NYAN and NEW would be distinguishable, both visually and phonetically, whereas conceptually, the marks did not suggest any meaning. Given the low level of similarity, there was no likelihood of confusion. Furthermore, as there was no evidence of the fame of NEW BALANCE, there was no reason to infer bad faith on the part of the Japanese company.
Presumably, there is an appeal procedure available.
ADIDAS - Canada
Adidas has a trade mark called TERREX, which is used as a sub-brand to designate the company's outdoor product range. When Adidas opened a Terrex shop in Vancouver, Canada, it ran into difficulties. The reason – the Adidas Terrex store is very close to the name of the store of a Canadian company that sells outdoor products, Arc'teryx.
The Canadian company feared that the Adidas Terrex stores would be confused and it sued Adidas for trade mark infringement. It argued that the three-stripe logo positioned in front of the Terrex logo was too similar to the letter 'A' in Arc'teryx. There was evidence of actual confusion – a number of people who went to the Terrex store believed that they were in an Arc'teryx store.
The Supreme Court in Vancouver ruled that there was a likelihood of confusion. The issue of damages is, however, still to be decided.
VANS - USA
Vans sneakers (Old Skool) have been around since 1966, being very popular with skateboarders, BMXers and other hip and happening types – see Vans sneaker image below . A company named MSCHF (clever hey!) recently introduced a sneaker called the Wavy Baby (see second photo), supposedly a parody of Old Skool shoes. When MSCHF was sued for trade mark infringement, the company raised the parody defence.
But the court wasn't having it. The court said that there was a real likelihood of consumer confusion. The judge said that US courts have given 'considerable leeway to parodists whose expressive works aim their parodic commentary at a trade mark or trademarked product... (yet) they also have not hesitated to prevent a manufacturer from using an alleged parody of a competitor's mark to sell a competing product.'
NIKE / FOOTWARE - USA
Nike has applied to register the trade mark FOOTWARE in the USA in relation to sneaker-specific 'computer hardware modules for receiving, processing and transmitting data in the Internet of things electronic devices ...'
It turns out that the application has been rejected by the US authorities on the grounds of descriptiveness / non-distinctiveness. The US authorities said that 'the addition of FOOT in front of WARE informs the consumer of a feature (or specification) of the computer software, hardware and services, that they are used in connection with footwear, the phonetic equivalent of footware.'
All the above concerning the simple "tackie"!
Reviewed by Gaelyn Scott, Head of ENS' IP Practice.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
