In 2019, the Applicants applied to register the word mark "FoFoCup - Just fold it!" as a European Union trademark, covering a range of goods, including bags, wallets, and various household and kitchen products. This application faced opposition from NIKE Innovate C.V., which argued that the younger application would unfairly benefit from the widespread recognition of Nike's renowned "JUST DO IT" trademark. The opposition was based on Article 8(1)(b) and Article 8(5) of the European Union Trademark Regulation (EUTMR).
Initially, the Opposition Division found Nike's evidence insufficient to demonstrate the high distinctiveness or reputation of the "JUST DO IT" trademarks within the EU, leading to the rejection of Nike's opposition. Undeterred, Nike appealed the decision, presenting additional evidence to support its claims of widespread recognition and extensive use of its trademark across the European Union.
The Fourth Board of Appeal of the European Union Intellectual Property Office (EUIPO) decided on 27 June 2024 that the new evidence supplemented the arguments previously filed. The evidence, including company briefs referencing the iconic "JUST DO IT" tagline and extensive media coverage, indicated significant recognition among sports clothing and footwear consumers.
The Board noted that, although some pieces of evidence were undated or lacked direct reference to the territory, collectively, they demonstrated significant use of the "JUST DO IT" mark. Reports from various EU countries and multiple media sources described the slogan as famous and integral to Nike's brand image. This widespread recognition, extensive advertising, and social media presence supported Nike's claim of the mark's strong reputation.
Moreover, earlier EUIPO decisions in 2011 and 2015 acknowledged the reputation of the "JUST DO IT" trademark. Given the new evidence, the Board concluded that the earlier mark had a strong reputation, at least for sportswear and footwear, justifying further examination of Nike's opposition.
In conclusion, the Board of Appeal annulled the previous decision, finding sufficient similarities between "JUST DO IT" and "FoFoCup—Just fold it!" to cause consumer confusion.
The Board decided to remitted the case to the Opposition Division for further examination, highlighting the importance of a comprehensive review in trademark disputes.
Comments
The Opposition Division's initial decision to deem Nike's evidence insufficient to demonstrate the high distinctiveness or reputation of the "JUST DO IT" trademark within the EU is crucial. It underscores the importance of presenting robust and well-documented evidence from the outset of opposition proceedings. The Fourth Board of Appeal of the EUIPO accepted the new evidence presented by Nike, determining that these evidence supplemented the arguments previously filed and were relevant to the case. This aligns with the established practice of allowing the introduction of new evidence that complete and strengthen the evidence already submitted, provided they are pertinent and presented fairly. Additionally, when considered collectively, the acceptance of undated or territorially unspecific evidence by the Fourth Board of Appeal is significant. It demonstrates flexibility by evaluating the evidence as a whole and a willingness to consider the cumulative impact of the trademark. This holistic approach ensures a fair assessment of the brand's reputation and recognition.
We will inform you and provide an update once the Opposition Division has reexamined the case, as the upcoming decision could significantly impact market dynamics. A ruling in favor of Nike might deter other entities from using marks similar to "JUST DO IT," reinforcing the strength of established trademarks and encouraging greater caution among companies considering similar branding. Conversely, a ruling against Nike could encourage other companies to attempt registrations of marks with some similarity, potentially leading to increased disputes and a shift in how trademark distinctiveness is interpreted and enforced.
