In The News

Wed 17 Oct 2018

Is Nike Perfume a Product of Nike?


Legal Services
Did you know that Nike perfume is not owned by Nike?

The Nike sports shoes and apparel global giant is not the owner of NIKE perfumes that are sold in Australia and else where in the world.

Nike perfumes are product of a Campomar (a Spanish company), who actually owned the trademark for “NIKE” before the American sportswear company. In fact, they established their business in 1928 and registered their trademark in 1940. The trademark covered all sorts of perfumery products, including soap and fragrances.

Nike Perfume

Campomar brought Nike perfumes to Australia and had succeeded in registering the Nike trademark here in 1984, following the other international trademarks already in existence under this name. Shortly after this, Campomar approached Nike sportswear company famous for the swoosh logo, and suggested a collaboration for a sports perfume, which Nike Sports refused and Campomar proceeded to launch their sports fragrance range on their own.

In 1993 Campomar released their “Nike Sports” fragrance, which was merchandised alongside other sports fragrances such as Adidas. Although Nike Sports fragrance was not associated with Nike Sportswear company, the confusion was considered enough to cause the Nike sportswear company to take action.

They first requested that Campomar cease the use of their own “Nike” trademark due to the confusion and deception caused to customers. They also claimed Campomar were “passing off” their product, using the marketing success of Nike shoes to push sales of their own product.

The Court Decision

The Australian court did recognise that the Nike sportswear were potentially aggrieved, as they had a widespread reputation in sportswear and athletic shoes. It is easy to see how consumers could be misled to think that Nike sports perfume were related to the well-recognised American company. The judge agreed that Campomar had deliberately altered their packaging font and marketing campaign to enhance their sales by way of association with Nike Sportswear.

Although Nike Sportwear were seeking to remove Campomar’s Nike trademark from the registry, Campomar were legally entitled to use it. The trademark had been well established before Nike Sportswear entry into Australia and they had been able to prove continuous use since it’s registration.

The outcome of this battle in Australia was a form of compromise. Campomar retained its trademark, although was obliged to discontinue its sports range. They are not permitted to use the descriptive word “sports” alongside the name “Nike” in the class 3 categories for soaps and perfumery.

Lessons

This case is of particular importance as it highlights some grey areas of trademark law, where a pre-existing trademark conflicts with a seemingly unrelated company. A simple sports fragrance became the centre of a conflict between a perfume producer and a sports company, where the trademark, its use, and potential misuse came into question.

As Campomar held their trademark first for NIKE, they were able to stop Nike Sportswear from expanding their product range into perfumes,frangrances and soaps. Similarly, Nike Sportswear were able to restrict Campomar from adding SPORTS to their NIKE branded fragrances and soaps. Having a well-established brand in sports shoes and apparel, this wasn’t the ideal outcome for NIKE Sportswear. Their preference was to have revoked the Campomar NIKE mark so they could use it themselves to expand their product range.

Nike Sportswear company had been incredibly successful in their marketing, thus lending them weight within this case. Smaller businesses should be aware that with less credence, publicity, and funding, the outcome may be somewhat different. As always, it’s best to create an original name, particularly if there’s any potential at all for product expansion in the future.

First to use, First to File

This case highlights the importance of First to Use and First to First in Australia for business names, product names, or service names in regard to branding. Ideally you should be the first person or business to create and trademark a unique name, then you will be able to successfully defend from other parties from taking it away from you at a future date. Don’t copy an existing business name, product or service name, even if the trademark is available. It’s best to be unique to being with.


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