Sportswear giant, Nike in its recent campaign ‘Nothing beats a Londoner’ had been using the mark “LDNR” as an abbreviation for ‘Londoner’. Frank Industries which manufactures and sells ladies’ leisure wear commenced legal proceedings against Nike arguing that it had infringed its “LNDR” trade mark.
Frank industries applied for an interim injunction, which it was granted but Nike denied the infringement claim and issued a counterclaim to have the “LNDR” trade mark invalidated.
The main issue concerned the perception of the two abbreviations based on the average consumer test; in this case a “purchaser of clothing, in particular ladies’ sportswear, who is a member of the general public and exercises a moderate degree of care and attention”.
Abbreviations form a significant part of daily communication among today’s youth and could mean several other things. While Nike was able to provide some evidence that “LDNR” referred to Londoner, Frank argued that even though this may be the case, a correlation could not be established with clothing.
The court found in favour of Frank as the marks were confusingly similar and as a result the injunction was made permanent. There was a high possibility for an average consumer to misread/or misspell hence mistaking one for the other.
Firstly, and most importantly for either a business or an individual, carrying out a search before using a particular mark is fundamental. Where a mark has not been used, it is crucial to secure trade mark protection for the product or brand before it is launched as a tarnished reputation and loss in investment can be costly. In this case, Nike being highly reputable and having carried out a search before launching its campaign should have settled the claim at the earliest opportunity presented.
Secondly, this case demonstrates the strength of the protection a product can benefit from where its trade mark has been registered, even in circumstances where the opponent is a global brand with significant financial resources available to it.
Briffa advises business of all shapes and sizes on all aspects of contentious and non-contentious trade mark law and practice. If you would like to arrange a free consultation to discuss any trade mark (or other intellectual property) issue, feel free to drop us an email on firstname.lastname@example.org or give us a call on 020 7288 6003.