Nike seeks to register “SNKRS” as a trade mark / Hermès secure its Kelly trade mark / Protecting copyright in photographs

Good morning everyone. Hope you are all healthy and thriving. For this week’s news:

Nike seeks to register “SNKRS” as a trade mark

For those of you unaware, Nike has a special app that warns customers about the release of limited edition and special products. This app is called “SNKRS” and its importance for Nike’s revenues has been growing. It comes with no surprise that Nike is now trying to seek registration in the US for this trade mark (on its own and in combination with the well-known swoosh logo) for use on:

• Clothing and footwear;
• Online market place featuring footwear and clothing;
• Services of providing information, news and commentary in the field of fashion, entertainment, sneakers, popular culture and sports;
• Service of providing a website that gives users the ability to review various print, photographic, graphic image, audio and video content.

Unfortunately for Nike, the USPTO examiners have raised some objections to the registration:

• Of the trade mark “SNKRS” as a standalone because of the descriptive nature of the trade mark. Just because Nike has removed the vowels from the word “sneakers” doesn’t make “SNKRS” less of a descriptive or generic word.
• Of the trade mark “SNKRS” in combination with the swoosh. Because of the reasons mentioned above, “SNKRS” remains descriptive and in order to accept the application, the USPTO requires from Nike a disclaimer that Nike does not claim exclusivity in relation to the word “sneakers” but only to the special spelling that customers have now associated with Nike and its special items.

Although this takes place in the US, the answer if Nike tries to register its mark in the EU might be the same from the EUIPO.

Hermès secure its Kelly trade mark

We believe that the Kelly bag does not need an introduction at this point in time since it has become a such a classic and iconic bag.

In addition to being protected through trade dress in the US, Hermès has also secured the use of “Kelly” as a trade mark to use in relation to handbags all across the globe, including in Japan.

As a consequence, Hermès filed an opposition to the registration of “D.Kelly” as a trade mark for an Osaka based handbag company. Indeed, according to Hermès, “D.Kelly” was used in relation to both physical stores in Japan and on the company’s website, as well as on its various bags. Although the bags offered by each company are not similar and definitely not similarly priced (Kelly bags retail price starts at around 7,000€), Hermès argued that consumers might confuse the offerings of the two companies because of the use of the “D. Kelly” mark.

The Japanese examiners agreed with Hermès and considered that both of the parties use their respective – and similar – marks on the same types of goods (handbags) relevant consumers may mistakenly associate “D.KELLY” with Hermès and its famed Kelly bag. Such confusion is further boosted by the fact that the Kelly bag has acquired a “remarkable degree of reputation” and consumer recognition. 

Protecting copyright in photographs

Back in 2014, during the Milan fashion week, Antonia Marras showed a collection that included wolf printed on the clothes worn by the models. The problem is that the wolf image that could be found on many of the clothes sold as part of her Fall/Winter 2014 collection belongs to an American photographer known for his work for National Geographic: Daniel J. Cox. Marras never secured the right to use the image in relation to its collection which, ultimately, gave rise to a copyright infringement claim.

Protection of photos, in Italy as well as in Spain and other Member States, usually distinguishes between “simple photos” and “artistic photos”. As you can imagine, artistic photos, such as the one at stakes here, benefit from stronger protection. It made no doubt in the opinion of the Court in Milan that the use of the photo by Marras constituted a clear copyright violation rejecting the claim of Marras that there was no infringement due to the availability of the photo on search engines, such as Google. As we have mentioned time and time again here, just because something is available online, does not mean that it is free of right.  

This is all for this week! You can expect a new thematic blog post on Friday! Until then, be safe.

Interesting readings:

• Samantha Levin – (Not) copyright infringement: is dbrand infringing Nintendo’s IP? - https://www.ipwatchdog.com/2020/05/16/not-copyright-infringement-dbrand-infringing-nintendos-ip/id=121637/