"Jump", trade marks and intimate garments on the Costa Bra ...va

Despite his good intentions to get down to writing about this case and render it down into blog-friendly format, this Kat has been so beset by other increasingly exciting alarums and excursions that the case in question will soon be old enough to grow its own whiskers.  It's Case T-233/10 Nike International Ltd v Office for Harmonisation in the Internal Market, Intermar Simanto Nahmias, a General Court (First Chamber) decision on a Community trade mark (CTM) appeal that harks back all the way to 25 May.

If a CTM case gets to the General Court in May 2012, you can be sure that it started a long, long time before then -- and that's what happened here. In September 2007 Nike sought to register as a CTM the word sign JUMPMAN, for ‘clothing, footwear, headgear; including apparel, namely, pants, shorts, shirts, t-shirts, pullovers, sweat shirts, sweat pants, underwear, sports bras, dresses, skirts, sweaters, jackets, socks, caps, hats, visors, sweatbands, gloves, belts, hosiery, arm bands, coats, vests, jerseys, wind-resistant jackets’ (Class 25).  Remember: this is the word mark.  The corresponding logo (above, right) has been around since the 1980s

Careful how
you choose me!
Spanish company Intermar opposed, basing its opposition on earlier registrations of Spanish and Community trade marks for the word JUMP, for goods in Class 25 (‘clothing, footwear, headgear’ and ‘footwear; socks’). According to Intermar this was a simple case of "similar mark" + "identical goods" + "likelihood of confusion" under Article 8(1)(b) of the CTM Regulation 40/94.  The OHIM Opposition Division agreed and, following Nike's appeal, so did the First Board of Appeal. Said the Board, (i) the relevant public was the general non-English-speaking public in Spain; (ii) the respective goods were identical, since Nike’s goods were included in the broad categories covered by Intermar's earlier mark; (iii) JUMP had distinctive character; (iv) JUMP and JUMPMAN were visually and phonetically similar (no conceptual comparison was relevant -- it was unlikely that the average Spanish consumer would understand the meaning of the English word “jump” though, if he did, the marks would have been conceptually similar to the extent that they shared that term’. Nike, having nothing better to do, then appealed to the General Court -- which again dismissed its appeal.

Held, by the General Court, that the appeal would be dismissed. In particular:

  • The Court agreed that goods such as those listed above in Nike's application were destined for the general public.  However, Nike could not assert that the level of this public’s attention would be higher than that of the average consumer in that the garments covered by the mark applied for were what were described somewhat coyly as ‘intimate garments’.  Even such garments are everyday consumer goods, in Spain at any rate. In any event, this argument would not wash: the goods covered by Nike’s application included those items of clothing which were not intimate as well as those which were.
  • Nike’s submission that the initially average distinctiveness of the word "jump" as a trade mark had become diluted was unconvincing. "Jump’ was not part of the basic vocabulary of the general public in Spain and would thus be perceived as a fanciful term.
  • Nike could not both (i) concede that it was likely that the relevant public did not attach a direct and unequivocal meaning to the term ‘jump’ and that, therefore, a conceptual comparison may not be established and (ii) argue that the word ‘jump’ bore for the average Spanish consumer – above all in connection with footwear, a connotation which was associated mentally with the idea of a sudden vertical movement or propulsion from the ground. If the word was not understood in Spain, it could have no meaning for the Spanish.
    • The Kat thought he may
    as well register his own jumping
    image as a CTM ...
  • If the word ‘jump’ had no meaning to the average Spanish consumer, that word was not made more meaningful through the addition of the word ‘man’. The Board was correct to find that there was a likelihood of confusion, on account of the distinctive character of the word ‘jump’, the identity of the goods concerned and the visual and phonetic similarities between the signs at issue.

The IPKat, while deeply impressed with the ingenuity of Nike's submissions, was always confident that they would provide more edification for the readers of this weblog than for that company's shareholders.  He adds that he has no problems regarding brand confusion when buying clothing, whether intimate or not: he has delegated the entire task of furnishing his wardrobe to Mrs Kat; she has solved the problems regarding brand confusion by purchasing all his clothing, whether intimate or not, at the local branch of M**** & S******.

Costa Brava here