Frankly, you shouldn't mess with a LNDR

Would you confuse a LDNR with a LNDR?*

A recent case from the IP Enterprise Court has the answer - Frank Industries PTY Ltd v Nike Retail BV [2018] EWHC 1893 (Ch)

Frank Industries owns a UK and an EU mark for LNDR in relation to “clothing” including “sportswear”. In early January, sportswear giant Nike started a new London focused campaign which used the sign LDNR in various ways including in a popular YouTube video.

Frank was unimpressed and after it became clear that the matter would not be resolved in correspondence, it started proceedings for trade mark infringement and passing off in the IP Enterprise Court (an increasingly popular English court for all your IP dispute needs - although larger disputes tend to go through the more regular High Court multi track, within this the Shorter Trials Scheme which is partly modelled on IPEC procedure has also proven popular).

Frank applied for and was granted an interim injunction which survived an appeal (reported by the IPKat here). Nike denied infringement and made the inevitable counterclaim to invalidate the marks.

The key question in the dispute was how would the average consumer perceive the signs LNDR and LDNR in context. The average consumer was identified as 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. 

Abbrv.

Apparently, despite not being forced to send v shrt txt msgs due to the constraints of SMS and the Nokia 3210, the youth of today are still "in the habit of writing and reading abbreviations in digital forms of communication such as texts, messages, tweets and Instagram posts, and in particular abbreviations in which vowels are omitted from words."

The judge, Arnold J, noted that "such abbreviations can be used and understood because the context makes the intended meaning clear". Gd pt.

Nike argued that LNDR is inherently descriptive as an abbreviation meaning Londoner. Frank disagreed and noted that in any event, "Londoner" does not denote a particular characteristic of clothing (and would not have been understood to do so).

Arnold J noted that, dependent on context, LNDR could be seen as an abbreviation of either LAUNDER, LENDER or LANDER or indeed the, sadly, fictional Limehouse, Newham and Docklands Railway

Although Nike found some evidence of LNDR being used as an abbreviation of Londoner, the usage was generally as #lndr together with other London-related hashtags and/or a photograph of a London landmark or similar. In other words, it was evident from the context that the meaning was "Londoner". Although Nike established

that LNDR could be understood to mean "Londoner" in the right context, it did "not begin to establish... that LNDR would have been perceived by the average consumer as meaning Londoner when used in respect of clothing ... in the absence of some context suggesting that meaning." Emphasis added.

In the absence of such evidence, Arnold J concluded that LNDR had "a moderately strong distinctive character" in relation to clothing.

Cats can be confusingly similar
Infgt?

Arnold J's conclusion that LNDR and LDNR are confusingly similar is far from controversial. As he noted "it is obvious that the average consumer would be likely to misread and/or mistype and/or mishear and/or misspeak one for the other from time to time."

The key issue for infringement was whether there was use in relation to clothing.

Nike argued that:
  1. the origin of the advertised goods was clear thanks to the Swoosh
  2. the average consumer would perceive LDNR as meaning Londoner and not as referring to the origin of the goods.
Following a review of the evidence, Arnold J concluded that some would see LDNR as "Londoner" and others would see it as a brand name. Enough people fell into the latter camp for there to be infringement. 

This conclusion was reinforced by the evidence of actual confusion from two witnesses who upon seeing the ad thought that Nike had entered into a collaboration with Frank. Although both witnesses had a personal connection to Frank, the judge didn't criticise their evidence and considered that "the only relevance of these witnesses’ personal connections with Frank is that it was through those connections that Frank became aware of their reactions and was able to adduce their evidence."

Nike's main defence was that the Nike marks are so well known that the average consumer would see them and only think of Nike. This did not exclude some form of collaboration or tie-up between Frank and Nike (as two of Frank's witnesses in fact believed).         

Cse mgmt

It's not always the sexiest of subjects, but case management and procedure are important for all litigants.  This dispute was particularly streamlined in large part due to the interim injunction, there was a speedy trial (which took place a few weeks before the end of the court term), but also thanks to the IP Enterprise Court itself. The IP Enterprise Court is commonly used for (relatively) low value, simpler IP disputes. It is well known for its damages cap of £500,000 and overall costs cap of £50,000. 

IPEC rules are aimed at simplifying the court procedure as much as possible. For example, the default is that applications are decided on the papers (rather than with the parties all appearing in court which is the norm in the multi track). Similarly, there is a cap on the number of witnesses (without the court's consent) and disclosure is limited. The rules also require a case to last no more than 2 days and arguments are guillotined leading to brevity all around.

This tight case management is in part responsible for the fact that the entire Frank v Nike dispute has taken less than 7 months from the advertising campaign being launched to judgment. This shows just how fast the court system can be when there is a need for speed.

Dsclmr - I used to have the pleasure of working with Arty Rajendra and Nick Kempton (now both at Osborne Clarke) who acted for LNDR together with Charlotte Groom also at Osborne Clarke and Douglas Campbell QC and Georgina Messenger of Three New Square. Cats courtesy of A Northey.

CUL8R


*or, are you more like Arnold J and more inclined to immediately think of a LNER?

Frankly, you shouldn't mess with a LNDR Frankly, you shouldn't mess with a LNDR Reviewed by Rosie Burbidge on Thursday, July 26, 2018 Rating: 5

2 comments:

Sally Cooper said...

I read your first paragraph and thought Nike was using the same four letters - so I misread. I sometimes wonder if there are other people who (like me) are very lazy when reading four capital letters in sequence - no doubt there's research somewhere on the issue. I also didn't get LONDONER from LNDR. Thanks for posting.

Anonymous said...

Bit of a cheeky argument from Nike that if they add their "swoosh" to anything then as their "swoosh" is so well known then all's good! And why does "swoosh" get a capital S?

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