Trademark Application – Importance of Declaring Product Classes

Trademarks rights are protected for only the classes of goods or services, which are declared by the company.

Let’s understand it with example of ‘Footware’ trademark by Nike.

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In 2019 Nike Innovate CV applied for registration of trademark ‘Footware’ for classes of products and services including scientific apparatus and instruments, telecommunications services, scientific and technological services and research and design related.

Puma SE opposed its registration saying that the term is non-distinctive, descriptive, and generic. Puma held that Nike has coined the term for wrongful exclusive rights by merging the generic terms of ‘footwear’ and ‘hardware’.

UK High Court dismissed the claim of Puma that “FOOTWARE” trademark sought by Nike is generic and descriptive.

UKIP registered the ‘FOOTWARE” trademark in May 2022. [RD]

The application to register ‘FOOTWARE’ by Nike is still pending in USPTO because it is opposed. [RD]

EUIPO cancelled the application due to invalidity. [RD]

The application to register ‘FOOTWARE’ by Nike is still pending in Canadian, Mexico, New Zealand, Philippines. [RD]

In Australia, the trademark term ‘FOOTWARE’ registered on 16 November 2020 but PUMA SE opposed the registration on 16 June 2021. However, in final decision on 12 Aug 2021, the Nike trademark of ‘FOOTWARE’ got status of registered and protected. [RD]

This trademark application by Nike is also successfully accepted and trademark registered in South Korea, India and Japan.

In my own humble opinion, apparently the claim of Nike looks faulty because ‘Footware’ sounds like a term related to shoes. However, the fact becomes clear when we closely observe the claimed classes of products and services – class 9, 38 and 42 under Nice classifications. In relation to the declared classes, the term is not descriptive at all because its pronounced meaning (something related to shoes) are opposite to its declared products and services – such as telecommunication and scientific apparatus. It seems like an arbitrarily coined name just like that of Apple inc.

It is also clearly unique and distinctive from the generic term of footwear. In my take, Nike team coined the term cleverly and rather intelligently.

The case study signifies the value of correctly mentioning product classes in trademark application after careful consideration.

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