A description is not trademark use

Did you know that imitation leather called Piñatex is made from pineapple leaves? This can be used for shoes, bags, jackets, and so on. Of course, the user wants to scream out loud that these clothes are unique because they are made from pineapple. But what if someone else has registered the trademark "Pineapple" for clothes? Wouldn’t this constitute a trademark infringement?

A similar situation occurred in the running world. The word "Nitro" is protected as a trademark for shoes. Brooks introduces a nitrogen-infused running shoe. It is not called "Nitro", but Brooks does communicate that the shoe is "Nitro-Infused". For Puma, which uses the registered Nitro trademark and markets its own running shoe under that name, this goes too far. It believes Brooks is infringing the Nitro trademark and is taking Brooks to court. Brooks, on the contrary, believes that it uses "Nitro" only in a descriptive manner and not as a trademark. Brooks also believes that Puma, which also uses the name for nitrogen-injected running shoes, does the same.

The District Court in The Hague disagrees with Puma. Brooks only uses 'nitro' to tell about the nitrogen infusion of its shoe, it is not used as a trademark. The court also questions the validity of the Nitro mark. A descriptive designation must remain free for all, and since 'nitro' describes an important feature of nitrogen-infused shoes, the Nitro mark may well have to be removed from the register. This would have to be done in a separate proceeding.

Sellers of Piñatex clothing thus do not have to worry. Even if there were a Pineapple brand for clothing, they can talk about this unique fabric in descriptive terms.

Mathijs Peijnenburg