12 Aug You must write a judgment deciding the case under the Trade Marks Act 1994.
- UK LLB Law
- 2000 word limit
- OSCOLA referencing
- notes and example judgment answer attached
Question 3: Nike v Drip Creationz
[Disclaimer: This question is based on a real world problem but the controversy is not currently in litigation in the UK court system]
Nike Inc sells athletic footwear. One of their best selling shoes is the Air Force 1 (see Figure 3.1). The company owns several trade marks in relation to their shoes. The company owns UK trade marks on the famous Nike ‘Swoosh’ symbol (see Figure 3.2), and on the shape of the Air Force 1 (see Figure 3.3). The shape trade mark is described as a ‘three-dimensional configuration comprising the design of the vertical ridge pattern on the sides of the sole of the shoe, the repeating star pattern on the toe and heel of the sole of the shoe, and the relative position of these elements to each other’. Both trade marks are registered in class 25 for footwear.
Figure 2.1: A Nike Air Force 1 shoe
Figure 3.2: The Nike Swoosh
Figure 3.3: The Nike Air Force 1 Shape Trade Mark Represented Visually
Drip Creationz is a California based company that sells ‘customized’ Air Force 1 shoes. The company buys Nike Air Force 1s which have been lawfully sold by Nike in multiple jurisdictions around the world, including the UK and the EU (for approximately £70 a pair). The company then removes, replaces, or adds material to the shoes to create unique designs (see Figure 3.4). The Nike Swoosh mark remains visible on the modified shoes. The shoes are then sold at double the price for which they were originally bought (approximately £140 a pair). The company ships the shoes around the world, including to the UK. The Drip Creationz website clearly states the company is not associated with Nike inc and that the shoes are merely customized resales.
Nike has brought the present trade mark infringement action against Drip Creationz in the UK under the Trade Mark Act 1994. Nike argues that the Drip Creationz have used their marks (the identical marks on identical goods) in commerce and this will cause consumer confusion as to the original source of the trainers (no direct evidence of conumser confusion is provided). Furthermore, the shoes are likely to dilute their famous marks. In their complaint, Nike says that ‘it has no desire to limit the individual expression of creatives and artisans’. However, it ‘cannot allow ‘customizers’ like Drip Creationz to build a business on the backs of its most iconic trademarks, undermining the value of those marks and the message they convey to consumers’. It asks thecourt to grant an injunction preventing further distribution of the shoes in the UK and to award £1 million in compensatory damages (£500,000 for infringement of the shape mark, and £500,000 for infringement of the Swoosh logo mark).
Figure 3.4: Drip Creationz Customized Air Force 1s
In response, Drip Creationz argues the Air Force 1 trade mark should be declared invalid. They argue that the shape of the shoe is not a distinctive. However, Nike can provide consumer survey evidence that demonstrates how consumers in the trainer shoe market have gradually come to recognise the shape of the Air Force 1 shoe over time. Furthermore, Drip Creationz claims that the shape mark, even if distinctive, is purely functional.
Drip Creationz acknowledges that the Swoosh mark is a valid trade mark which they have used in commerce. Nevertheless, they argue that in respect to the Swoosh mark (and the shape mark, if the court fails to revoke it), Nike exhausted its rights when it sold the shoes on the market. And lastly, even if the rights have not been exhausted, Drip Creationz maintain they have not used the protected marks in commerce without due cause because their artistic reuse of the shoes is protected freedom of expression.
You are a judge in the UK Supreme Court. You must write a judgment deciding the case under the Trade Marks Act 1994. You do not need to consider any claims related to registered or unregistered design rights.
