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Frank Industries Pty Ltd v Nike Retail BV [2018] EWHC 1893 (Ch)

Case Summary  |  Judgment  |  25 July 2019

 

James Abrahams QC and Jessie Bowhill appeared for Nike.
This was a claim for trade mark infringement and passing off relating to the mark “LNDR”, registered in respect of clothing including sportswear. The claim arose out of Nike’s use of the sign “LDNR” as part of an advertising campaign, the object of which had been to promote their famous sportswear brand amongst Londoners.

Nike denied infringement and counterclaimed for a declaration that the trade marks were invalid, on the basis that “LNDR”, as an abbreviation meaning Londoner, was inherently descriptive.
Nike’s case on infringement was that there had not been use in relation to clothing. Nike’s famous trade marks had been used throughout the campaign and, Nike submitted, the average consumer would understand these to denote trade origin.

Arnold J rejected Nike’s counterclaim, holding that the mark would not be perceived by the average consumer as denoting a characteristic of clothing. Therefore, the mark was found to be inherently distinctive.

In relation to infringement, Arnold J held that that there had been use in relation to clothing. There had been instances of actual confusion, in which consumers had assumed that the campaign represented a collaboration, and it was held that there was infringement under Article 9(2)(b). Nike was found to not have a defence of descriptive use.