May 9, 2019
We all know so many brand names and businesses that have become household names for us. I think we can all agree that Nike is one of those household brand names we all know. Nike is a global brand that designs, creates and sells athletic and sportswear. Companies such as Nike that have a global presence around the world really take their intellectual property rights seriously and in doing so have reached the heights of being so well known.
In recent months, the athletic giants have filed a lawsuit in America against a Chinese footwear producer OneMix. Nike’s claims against the company are a number of alleged infringements from trade marks to registered designs.
Nike’s Registered Design
Registered Designs protects the external shape and aesthetics of the product. Registering these designs gives the owner monopoly rights over the product. This exclusivity of rights allows the owner to stop anyone copying the external design of their product within the registered territory. In this case, Nike sought to enforce its several registered designs. They provided evidence of their registered designs and evidence that OneMix had infringed these. Nike also went on and stated that upon putting OneMix on alert of the infringement they continued to still manufacture, promote and sell their infringing products in the US.
Nike’s Trade Marks
Further to the accusations of design right infringement, Nike also accused OneMix of using Nikes registered trade marks. A trademark can be any name, word, symbol, slogan, or device that serves to both identify and distinguish a business or product from others in the market.
Nike stated that OneMix’s unjustified use of their trademarks – “Air Max”, “Flywire” and “Flyknit” was causing economic damages for US company. “Air Max” was registered in the year 1988, “Flywire” in 2009 and the last, “FlyKnit” that was registered in the year 2013. As a result of continuous and long-standing promotion, substantial sales, and consumer recognition since registration – it can be argued that Nike has developed powerful reputation and goodwill in these marks.
Trade marks are essential part of a business. They are what make help distinguish a brand/business between other competitors. Registering trade marks provides business with clear protection of what they register. As we see here even a globally recognised company Nike take their trade mark filing seriously. The reason for this is that trade mark are an effective form of protection against infringement.
Trade marks are an effective communication tool. For example, “Air Max” as a mark is recognised globally, regardless of whether the native language is: Swahili, Chinese, Spanish, Russian, Arabic or English. Trade marks are an asset. Trade marks appreciate over time. The more reputation grows in a mark, the more valuable these brands become.
Nike’s trade marks are extremely important for the company, they want to minimise the use of the marks where possible by other competitors and companies so the substandard or non-authentic goods do not damage the brand. Nike’s trade marks inspire positive feelings in people’s minds. As a result, products are more attractive to clients.
OneMix, without the authorisation of Nike, in deciding to promote, distribute and sell footwear using the Nike trademarks through distributors such as Amazon, Ebay or AliExpress – adversely impact Nike’s ability to benefit from its brand.
The consequences for Nike are numerous among them are the commercial losses. As such, Nike are justified and compelled to enforce their monopoly over use of these registered marks.
Considering the number of instances of alleged infringement and combination of both trade marks and designs, it’s extremely unlikely that that OneMix can argue that the infringements are incidental or not exhibiting a questionable amount of similarity.
So, it really is not looking good for OneMix especially as Nike has robustly protected the IP in question – allowing the company to seek the most comprehensive recourse. Should they have failed to register these critical assets – they might have had less capacity to defend their innovations.
A proactive attitude to IP, like Nike, will ensure that losses are minimised; and that any damage that has been felt can be reimbursed.
If you have any issues with trade mark or any other aspects intellectual property that you want to discuss or you want to have a more proactive approach to your IP, we at Briffa advises on all aspects of intellectual property law and practice and offers free 30-minute consultations to all new clients. If you would like to book a call or a meeting with one of our specialist IP lawyers, please contact firstname.lastname@example.org or 020 7288 6003.
Written by Hasnath Ahmed, Solicitor
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