Nike’s trade mark JUMPMAN refused in Ireland

In a trade mark opposition decision of the Irish Patents Office, Nike’s application to register JUMPMAN (for clothing, footwear, headgear) has been refused due to a likelihood of confusion with prior EU trade marks for JUMP of Intermar, a Turkish footwear firm.

The Hearing Officer found that visually, verbally and conceptually JUMPMAN and JUMP share an overall high level of similarity. The ‘MAN’ element is an insufficient difference. In fact, the Hearing Officer found that, for the goods at issue, ‘MAN’ would be seen as indicating that goods bearing the mark were directed specifically towards male consumers.

Part of Nike’s defence was alleging the EU trade marks relied on by Intermar in the opposition proceedings have not been put to genuine use. The Hearing Officer observed that, from the opponent’s evidence, it had made no use of JUMP in Ireland, and the full extent of use in the EU was one customer in Bulgaria. While it is a ground for cancellation of an EU trade mark if it has not been put to genuine use in the EU within a continuous period of 5 years, this is not part of Irish national opposition procedure. A cancellation application can only be taken before EUIPO. (Nike appears not to have exercised this option). Accordingly, the Hearing Officer said his hands were tied. He had to reach a decision on the basis that the opponent has earlier trade marks for JUMP, regardless of whether they have been put to genuine use or not.

This is a well known procedural gap in the Irish trade mark opposition framework. It is anticipated that this will be reviewed when the Irish Trade Marks Act and Rules are next up for revision by the authorities.

In contrast, the UK opposition procedure allows for defence based on proof of use. In fact, in the corresponding proceedings in the UK based on the same trade marks, Nike was successful in this defence. The UKIPO found that use of the opponent’s EU trade marks was insufficient to constitute genuine use in the EU, meaning that the trade marks could not be relied upon as the basis for opposition. The UK opposition was therefore dismissed, without going on to consider the question of similarity, and the trade mark JUMPMAN is now registered in the UK.

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