Nike International Ltd has recently won another battle in its lengthy dispute against the owner of the Spanish trademark Nike, a dispute that has been recently tilting in favour of the international sportswear manufacturer.
In this case, it is the Third Chamber of the High Court that has delivered a judgement in favour of Nike International Ltd in its appeal against the Spanish Patents and Trademarks Office’s decision not to register the combined trademark NIKE -which consists of an image of a circle that represents the planet earth crossed by a series of lines, with the outer part of both hemispheres containing the inscription “Nike International Ltd”-, which was requested for the products belonging to classes 18 and 25. This dismissal was based on the idea that there was a risk of confusion with the already registered NIKE trademark, which is used together with the image of the Victory of Samothrace, given that the word NIKE was considered to be the differentiating element of both of these trademarks.
In its judgement the High Court applied the general doctrine regarding contrast between combined trademarks, which establishes that when comparing trademarks that incorporate both graphic and word elements, all elements -be they graphic elements, figures, colours, etc.- have to be considered in order to assess the similarities that exist between them.
Based on the above, it was considered, upon comparison of all the elements that characterise the trademarks in conflict, that the two trademarks were sufficiently different from each other as to avoid, at first glance, confusion between them, even if similar products or services can be associated to both of them. This decision was also based on the idea that the opponent focuses mainly on the image of the Victory of Samothrace, the NIKE denomination thus becoming a secondary element, whereas the applicant’s trademark highlights the image of the globe, which therefore prevails over the Nike International inscription.
Furthermore, the Court considered that there is no risk of confusion between both trademarks because the trademarks that include the name Nike and Nike International are renown and very well-known for the public, which means that when consumers observe the graphic elements of the applicant’s trademarks they will not confuse them or associate them with the opponent’s trademarks; they will associate them, instead, with the applicant’s already registered trademarks, such as the Nike Air trademark, which is well-known all across the world, and the famous “swoosh” that symbolizes the Nike International trademark.