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Clothes firm wins David and Goliath battle with Nike

Posted: 17th October 2018   In: Corporate Commercial

A small clothes firm with a turnover of just over £300,000 has won a trademark dispute with the sportswear giant Nike.

Frank Industries, based in London, owns the UK and EU trademarks consisting of the letters LNDR. Its sports clothes are sold in stores like Harrods, Harvey Nichols and Selfridges.

In January 2018, Nike launched a "nothing beats a Londoner" advertising campaign aimed at young people. The campaign used the sign LNDR and devices which included those letters in combination with Nike's well-known "swoosh" mark.

Frank claimed that Nike's use of LNDR created a likelihood of confusion and therefore infringed its marks.

Nike argued that Frank's marks were invalid because they were inherently descriptive. It argued that LNDR was perceived by the average consumer to be an abbreviation of "Londoner".

As to infringement, it argued that its marks were so well known that the average consumer would interpret the use of LNDR along with the swoosh as advertising Nike goods. It also contended that the average consumer would understand LNDR to be an abbreviation of "Londoner" and would not see it as referring to the origin of the goods.

Frank argued that even if LNDR was understood to be an abbreviation of "Londoner", it was not understood to denote any characteristic of clothing. On the infringement point, it argued that Nike's use of the "swoosh" did not preclude the possibility of consumers thinking that its use of LNDR indicated some sort of collaboration with Frank.

The High Court found in favour of Frank.

It held that Frank's trade marks were not invalid. Nike could not point to any dictionary or reference work which defined LNDR as "Londoner".  Instead, it relied on searches of the social media sites "Instagram" and "Twitter".

The evidence produced by those searches established that, when used in an appropriate context in digital media, LNDR was understood by some consumers to mean "Londoner".

However, it did not establish that, when used in respect of clothing and without some signifying context, it would be perceived by the average consumer as meaning "Londoner". Still less did it establish that LNDR would be perceived as denoting some characteristic of clothing.

Frank was granted an injunction preventing Nike using LNDR in its advertising campaigns.

Please contact Sarah Liddiard if you would like advice about trademarks or any aspect of litigation and protecting your business.

 

Posted by: Sarah Liddiard
Corporate Commercial
Luton Office