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England and Wales High Court (Chancery Division) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Frank Industries Pty Ltd v Nike Retail BV & Ors  EWHC 1893 (Ch) (25 July 2018)
Cite as:  EWHC 1893 (Ch)
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BUSINESS AND PROPERTY COURTS
INTELLECTUAL PROPERTY LIST (CHANCERY DIVISION)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| FRANK INDUSTRIES PTY LTD
|- and -
|(1) NIKE RETAIL BV
(2) NIKE EUROPEAN OPERATIONS NETHERLANDS BV
(3) NIKE (UK) LIMITED
James Abrahams QC and Jessie Bowhill (instructed by DLA Piper UK LLP) for the Defendants
Hearing dates: 12-13 July 2018
Crown Copyright ©
MR JUSTICE ARNOLD :
|The Trade Marks||4|
|The signs complained of||5-6|
|Frank and its business||9-48|
|Nike and their business||21-28|
|Abbreviations in contemporary language||29-30|
|The genesis of the Campaign||32-46|
|Nike's trade mark search||47|
|Elements of the Campaign||48-59|
|Nike LDNR award||49|
|Nike website and app||56|
|Premier League Football matches||57|
|Key legislative provisions||60-61|
|Relevant dates for assessment||62-63|
|The average consumer||64|
|Validity of The Trade Marks||65-87|
|Article 4(1)(c) of the Directive/Articleb7(1)(c) of the Regulation||66-67|
|Acquired distinctive character||68-76|
|Article 4(1)(c)/Article 7(1)(c)||77-86|
|Acquired distinctive character||87|
|Infringement under Article 10(2)(b) of the Directive/Article 9(2)(b) of the Regulation||88-117|
|Use in relation to goods or services||89-90|
|Comparison of goods and services||91|
|Likelihood of confusion||92|
|The distinctive character of the Trade Marks||94|
|Comparison of the Trade Marks and the signs||95-96|
|Comparison of goods and services||97|
|Use in relation to clothing||98-108|
|Has there been actual confusion?||109-116|
|Infringement under Article 10(2)(c) of the Directive/Article 9(2)(c) of the Regulation||120|
|Defence under Article 14(1)(b) of the Directive/Article 14(1) of the Regulation||121-132|
|Signs or indications concerning characteristics of goods or services||122|
|In accordance with honest practices||123-128|
|Sign or indication concerning a characteristic of the goods||129|
|In accordance with honest practices||130-131|
|Summary of principal conclusions||134|
The Trade Marks
i) UK Trade Mark No. 3095285, a series of two marks, the word LNDR and a barely stylised word consisting of LNDR in a plain font, registered in respect of goods and services in Classes 3, 14, 18, 25, 35 and 42 including "clothing … sportswear" in Class 25 with effect from 19 February 2015; and
ii) International Trade Mark (EU) No. 1318062, the word LNDR registered in respect of goods in Class 25 including "clothing … sportswear" with effect from 10 March 2016.
The signs complained of
i) LDNR in plain text, primarily as part of the phrases "Nothing beats a LDNR" and "Show you're a LDNR";
ii) the following device (referred to as "the Lock-up"):
iii) the following device (which I shall refer to as "the NBAL Lock-up"):
Frank and its business
"The abbreviation of LNDR is a wink to the brand's DNA: although team members are from different corners of the globe, each is now a proud 'Londoner'."
Nike and their business
Abbreviations in contemporary language
"Q: Where would you take someone visiting from outside London? A: @WallaceMuseum Great choice from today's new LDNR"
In this example, the fact that the intended meaning of LDNR is Londoner is very clear from (i) the name and nature of the user, (ii) the fact that the question relates to London, (iii) the fact that the Wallace Museum is a visitor attraction in London and (iv) the syntax of the answer.
The genesis of the Campaign
i) Mr McCall.
ii) Ruth Hooper, who led the Campaign from a marketing perspective under Mr McCall's overall supervision. She left Nike at the beginning of April 2018 to pursue other interests.
iii) Philip Jacobson, Senior Brand Communications Director, who managed Nike's relationship with Wieden & Kennedy ("W&K"), an advertising agency that supported Nike on the project.
iv) Jean-Luc Bragard, Brand Communication Manager.
v) Andy Walker, Brand Design, who was responsible for the look and feel of all marketing activities.
AN IDEA ON HOW TO SHARPEN OUR EDGE AS BRAND WITH AND FOR LONDON LIKE NEVER BEFORE".
"ONE LDN. ONE NIKE
SHARPEN OUR EDGE AS BRAND WITH AND FOR LONDON LIKE NEVER BEFORE".
This version of the brief also uses the abbreviation LDN on three other pages.
IN A CITY BURSTING WITH SO MANY TALENTED KNOWNS, FEW IN THE WORLD COULD STAY SO CONFIDENTLY OPTIMISTIC.
LET'S CHAMPION THE SWAGGER AND UNBREAKABLE SPIRIT OF YOUNG LONDON UNKNOWN'S.
BECAUSE THE TRUTH IS…
NIKE'S POV [POINT OF VIEW]:
NOTHING BEATS A LONDONER"
This was the origin of the "Nothing beats a Londoner" theme of the Campaign.
"The more London the better, as Ruth said it doesn't need London in line, but it might be language that is more colloquial / of London."
"What is our CTA [Call to Action], sign off, ask of the Unknowns? We had some good discussions around LDN swoosh, LDNR swoosh, London swoosh – we need to further define where we go with this and how it lives in the world."
Nike's trade mark search
Elements of the Campaign
"SHOW YOU'RE A LDNR
Key legislative provisions
Absolute grounds for refusal or invalidity
1. The following shall not be registered or, if registered, shall be liable to be declared invalid:
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;
4. A trade mark shall not be refused registration in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration, following the use which has been made of it, it has acquired a distinctive character. A trade mark shall not be declared invalid for the same reasons if, before the date of application for a declaration of invalidity, following the use which has been made of it, it has acquired a distinctive character.
5. Any Member State may provide that paragraph 4 is also to apply where the distinctive character was acquired after the date of application for registration but before the date of registration.
Rights conferred by a trade mark
1. The registration of a trade mark shall confer on the proprietor exclusive rights therein.
2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the registered trade mark, the proprietor of that registered trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
(b) the sign is identical with, or similar to, the trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) the sign is identical with, or similar to, the trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to, or not similar to, those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
Limitation of the effects of a trade mark
1. A trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:
(b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services;
2. Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters."
Relevant dates for assessment
The average consumer
Validity of the Trade Marks
"33. A sign which, in relation to the goods or services for which its registration as a mark is applied for, has descriptive character for the purposes of Article 7(1)(c) of Regulation No 40/94 is – save where Article 7(3) applies – devoid of any distinctive character as regards those goods or services …
36. … due account must be taken of the objective pursued by Article 7(1)(c) of Regulation No 40/94. Each of the grounds for refusal listed in Article 7(1) must be interpreted in the light of the general interest underlying it ….
37. The general interest underlying Article 7(1)(c) of Regulation No 40/94 is that of ensuring that descriptive signs relating to one or more characteristics of the goods or services in respect of which registration as a mark is sought may be freely used by all traders offering such goods or services ….
38. With a view to ensuring that that objective of free use is fully met, the Court has stated that, in order for OHIM to refuse to register a sign on the basis of Article 7(1)(c) of Regulation No 40/94, it is not necessary that the sign in question actually be in use at the time of the application for registration in a way that is descriptive. It is sufficient that the sign could be used for such purposes ….
39. By the same token, the Court has stated that the application of that ground for refusal does not depend on there being a real, current or serious need to leave a sign or indication free and that it is therefore of no relevance to know the number of competitors who have an interest, or who might have an interest, in using the sign in question …. It is, furthermore, irrelevant whether there are other, more usual, signs than that at issue for designating the same characteristics of the goods or services referred to in the application for registration ….
46. As was pointed out in paragraph 33 above, the descriptive signs referred to in Article 7(1)(c) of Regulation No 40/94 are also devoid of any distinctive character for the purposes of Article 7(1)(b) of that regulation. Conversely, a sign may be devoid of distinctive character for the purposes of Article 7(1)(b) for reasons other than the fact that it may be descriptive ….
47. There is therefore a measure of overlap between the scope of Article 7(1)(b) of Regulation No 40/94 and the scope of Article 7(1)(c) of that regulation …, Article 7(1)(b) being distinguished from Article 7(1)(c) in that it covers all the circumstances in which a sign is not capable of distinguishing the goods or services of one undertaking from those of other undertakings.
48. In those circumstances, it is important for the correct application of Article 7(1) of Regulation No 40/94 to ensure that the ground for refusal set out in Article 7(1)(c) of that regulation duly continues to be applied only to the situations specifically covered by that ground for refusal.
49. The situations specifically covered by Article 7(1)(c) of Regulation No 40/94 are those in which the sign in respect of which registration as a mark is sought is capable of designating a 'characteristic' of the goods or services referred to in the application. By using, in Article 7(1)(c) of Regulation No 40/94, the terms 'the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service', the legislature made it clear, first, that the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service must all be regarded as characteristics of goods or services and, secondly, that that list is not exhaustive, since any other characteristics of goods or services may also be taken into account.
50. The fact that the legislature chose to use the word 'characteristic' highlights the fact that the signs referred to in Article 7(1)(c) of Regulation No 40/94 are merely those which serve to designate a property, easily recognisable by the relevant class of persons, of the goods or the services in respect of which registration is sought. As the Court has pointed out, a sign can be refused registration on the basis of Article 7(1)(c) of Regulation No 40/94 only if it is reasonable to believe that it will actually be recognised by the relevant class of persons as a description of one of those characteristics …."
i) Annex 6 to Nike's Amended Defence and Counterclaim contains 70 posts on Instagram ranging in date from 24 July 2017 to 20 March 2018 featuring the hashtag #lndr. Although Annex 6 includes figures for the numbers of followers of the users in questions, which are mostly small, the figures relate to the date that the Annex was compiled and not the date the relevant post was published. Over half of the posts were made by just two users: 22 by skylevel98 and 19 by diary_of_a_lndr (although the Annex gives the author of five of the latter as "london_callingxoxo" for no apparent reason). Ms Turner gave unchallenged evidence that the diary_of_a_lndr account was created on 11 February 2018.
ii) Annex 7 to Nike's Amended Defence and Counterclaim contains 12 tweets on Twitter ranging in date from 27 July 2012 to 11 March 2018 featuring the hashtags #lndr or #LNDR. Again, the numbers of followers, which are all small, relate to the date of compilation of the Annex. One of the tweets duplicates an Instagram post included in Annex 6, and three other tweets are by the same user as that one.
iii) Exhibit JSM33 to Mr McCall's third witness statement is an image of the homepage on Instagram of diary_of_a_lndr (i.e. the same user as the one referred in sub-paragraph (i) above). There is no date given for the image (apart from an internal date of 1 January 1970 which is obviously erroneous), but for the reason given above it must be after 11 February 2018.
iv) Exhibit JSM34 to Mr McCall's third witness statement contains seven tweets on Twitter ranging in date from 11 May 2016 to 12 February 2018 featuring one of the following: Lndrs, LNDrs or #ldn4all_lndr. Again, the numbers of followers, which are all small, relate to the date of compilation of the exhibit. As Ms Turner pointed out, three of the tweets are from participants in a photography group called London 4 All, which meets to take photographs of London, in two sessions on 12 and 13 February 2018 using the session hashtag #ldn4all_lndr.
v) Exhibit JSM35 to Mr McCall's third witness statement contains 40 posts on Instagram ranging in date from 12 February 2018 to 17 March 2018 mainly featuring #ldn4all_lndr although there are three by one user featuring @lndr and one by another user featuring @lndrs. As Ms Turner pointed out, most of these users were participating in the London 4 All sessions referred to in sub-paragraph (iv) above.
vi) Nike say that they have not exhibited all the results found by their searches on the ground that to do so would be disproportionate.
i) The numbers of posts and tweets, and in particular the numbers prior to the relevant dates, are small. By comparison, Instagram has over 500 million daily active users worldwide, while Twitter has 100-160 million daily active users, and the hashtag #Londoner has been used 1.1 million times on Instagram.
ii) Not only do most of the posts and tweets post-date the relevant dates, but also many of them post-date the commencement of the Campaign, and therefore may have been influenced by it. Thus it is difficult to believe that it is a coincidence that diary_of_a_lndr was created, and London 4 All used the session tag @ldn4all_lndr a couple of days after the Film was released. By comparison, a search of Instagram for the hashtag #LNDR in the period 22 September 2017 to 13 January 2018 revealed a large number of posts relating to Frank's brand (typically photographs of people wearing Frank's clothing) and only a very few relating to anything else (and most of those relate to an Indonesian football team).
Infringement under Article 10(2)(b) of the Directive/Article 9(2)(b) of the Regulation
"(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;
(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;
(c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;
(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;
(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;
(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;
(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;
(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;
(i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;
(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and
(k) if the association between the marks creates a risk that the public might believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion."
"In my judgment the general position is now clear. In assessing the likelihood of confusion arising from the use of a sign the court must first consider the matter from the perspective of the average consumer of the goods and services in question and must take into account all the circumstances of that use that are likely to operate in that average consumer's mind in considering the sign and the impression it is likely to make on him. The sign is not to be stripped of its context."
i) Annex 2 to Nike's Amended Defence contains screenshots captured on various dates in January to March 2018 of a number of websites. The first is a blog entitled The LDNR located at thelndr.wordpress.com which appears to have been published from 27 July 2013 to 8 December 2013 and which described itself as "A guide to London's best bars, clubs and restaurants through the eyes of an adventurous Ldnr". There is no evidence as to how many page views the blog has received.
ii) The second is a website called PROUD LDNR located at www.proudldnr.com which was set up in 2015 by the individual behind the blog, Derrick Plahar, and which is an online supplier of casual clothing branded Ldnr. (i.e. including a stop) and LDNR. The website also promotes its products by posts on Instagram using the hashtag #LDNR (among others). There is no evidence as to how many page views the website has received, but a Facebook post by Proud Ldnr dated 31 January 2018 states that "all our releases are limited edition in small quantities". Mr Plahar owns a trade mark registration for Ldnr which Frank has applied to invalidate.
iii) The third is a website called LDNR located at www.eyerespect.com operated by Foresight & Vision which supplies eyewear branded LDNR. The website describes the LDNR brand in terms that make it plain that it stands for Londoner e.g. saying it is "proud to be LDNR". The brand has also been promoted on Twitter and Facebook. One of the tweets is of an image which reproduces the description of the brand from the website accompanied by the words "LDNR – LonDoNeR" and "Born in London". There is no evidence as to how long the website has been operational, how many page views it has received or what quantity of eyewear it has sold.
iv) The fourth is an Eventbrite listing for TBN x LNDR, a writing workshop organised for Londoners in October 2017 and funded by the Arts Council England. There is no evidence as to how many attended.
v) The fifth is a website called London On The Inside located at londontheinside.com, which uses the abbreviation LDNER. Nike rely upon a linked post on a Hoxton Radio website dated 12 January 2015 which used LDNR instead.
vi) Annex 3 to Nike's Amended Defence contains 623 posts on Instagram ranging in date from 20 April 2013 to 20 March 2018 featuring the hashtag #ldnr, of which 122 pre-date 11 January 2018. A few of these are posts by the clothing and eyewear suppliers referred to above. Although Annex 3 includes figures for the numbers of followers of the users in questions, which are mostly small, the figures relate to the date that the Annex was compiled and not the date the relevant post was published.
vii) Annex 4 to Nike's Amended Defence contains 89 tweets on Twitter ranging in date from 13 April 2014 to 20 March 2018 featuring the hashtags #ldnr or #LDNR, of which 28 pre-date 11 January 2018. A few of these are tweets by the clothing and eyewear suppliers referred to above. Although Annex 4 includes figures for the numbers of followers of the users in questions, which are mostly small, the figures relate to the date that the Annex was compiled and not the date the relevant post was published.
viii) Exhibit JSM29 to Mr McCall's third witness statement contains three tweets by "ldnr. The London app" dated 17 March 2014, three tweets by Life loving Londoner using the handle @LifeLovingLDNR dated 2 April 2014 and a tweet by "Lndrs" using the handle @HelloLdners dated 8 March 2018.
ix) Exhibit JSM30 to Mr McCall's third witness statement contains 121 tweets on Twitter ranging in date from 18 October 2016 to 7 March 2018 featuring one of the following: LNDrs, Lndrs, Ldnr, LDNRs, LDNR or LDNRS or a corresponding hashtag. Some of these are by users mentioned above, such as ldnr_eyewear. Again, the numbers of followers, which are mostly small, relate to the date of compilation of the exhibit. As counsel for Frank pointed out, in a case where the numbers are not small, there is an unexplained discrepancy: a tweet by London On The Inside dated 29 July 2015 is accompanied by the statement that this user had 266,754 followers whereas a tweet by the same user dated 20 October 2015 is accompanied by the statement that the user had 137,387 followers. Accordingly, I cannot regard these figures as reliable.
x) Exhibit JSM31 to Mr McCall's third witness statement contains 190 posts on Instagram ranging in date from 13 March 2017 to 3 April 2018 featuring ldnr, ldnrs, LDNR, Ldnrs, LDNRs or a corresponding hashtag. Some of these are by users mentioned above, such as ldnr.biz, which is the eyewear brand again, and proudldnr. No less than 142 of the posts are by one user, namely "ldnrs". It can be seen that this is the same individual as the third user referred to in sub-paragraph (viii) above. Again, the numbers of followers, which are all small, relate to the date of compilation of the exhibit.
xi) Again Nike say that they have not exhibited all the results found by their searches on the ground that to do so would be disproportionate
i) Frank's strongest case is the use of the Lock-up on the T-shirts. In this instance, there is no context to inform a consumer seeing one of the recipients wearing a T-shirt of the meaning of LDNR except that, in all probability, the persons in question would be in London. In my judgment, some consumers would perceive LDNR to mean Londoner in this context, but some would not. Moreover, of those who perceived LDNR to mean Londoner, some would perceive it also to be being used as a brand name. This is particularly true in the case of the T-shirts bearing ® symbols.
ii) It is convenient next to consider the images of recipients of T-shirts which were posted on social media, such as the images of TJ Burnett and AJ Tracey referred to in paragraph 50 above. All of the images to which my attention was drawn have some context in form of captions referring to London or being Londoner or both (as in the case of the AT Tracey post). The images are likely to have had more impact on viewers than the captions, however. Mr Cliff's evidence was that he had not noticed AJ Tracey's caption "I'm a #LDNR" when he was talking to Mr Brees. I do not find that surprising, nor do I think that Mr Cliff was untypical in that respect. In my judgment, some consumers would perceive LDNR to mean Londoner in this context, but some would not. Mr Cliff is representative of the latter group. Moreover, of those who perceived LDNR to mean Londoner, some would perceive it also to be being used as a brand name.
iii) I turn next to the advertising at football matches (paragraph 57 above). This comprised the Lock-up on pitchside barriers and as part of the background wallpaper when the Arsenal manager Arsène Wenger was being interviewed for BT Sport. In neither of these cases was there any context other the fact that the matches involved London clubs and took place in London. The presence of the Swoosh would suffice to make the average consumer realise that these were Nike advertisements, and by inference advertisements for (among other things) Nike clothing. In my judgment, some consumers would perceive LDNR to mean Londoner in this context, but some would not. Moreover, of those who perceived LDNR to mean Londoner, some would perceive it also to be being used as a brand name.
iv) Perhaps the most important form of use is the Film (paragraphs 51-52 above). Counsel for Nike submitted, and I accept, that it would be apparent to the average consumer (a) that this is about Londoners and (b) it is an advertisement for Nike, and in particular Nike clothing. The question which remains is how the average consumer would perceive LDNR in the context of the Lock-up on the T-shirt worn by Skepta at 2:55 and in the context of the final screen at 2:58 to 3:08. In my judgment, some consumers would perceive LDNR to mean Londoner in this context, but some would not. Ms Chambers and Ms Kazakevica are representative of the latter group. Moreover, of those who perceived LDNR to mean Londoner, some would perceive it also to be being used as a brand name.
v) Next I will consider the display of the NBAL Lock-up in the window of the Niketown store on Oxford Street in London (paragraph 55 above). Although the Film was screened in an adjacent window, many passers-by will not have stopped to watch that. For most passers-by, therefore, the only context was that provided by the location. Given the disjunction between the script on the one hand and LDNR and the Swoosh on the other hand, and without the context provided in, say, the Film, I do not consider that it would be obvious to all consumers how the NBAL Lock-up was meant to be read. In my judgment, some consumers would perceive LDNR to mean Londoner in this context, but some would not. Moreover, of those who perceived LDNR to mean Londoner, some would perceive it also to be being used as a brand name.
vi) Next I will consider the iPhone app (paragraph 56 above). Leaving aside uses of the Lock-up in relation to half-term events, this includes three uses. The home page is headed:
"You set the trends. The worlds [sic] follows.
LDNR: STYLE FOR THE CITY"
Under this, there is an NBAL Lock-up on top of photographs of Sir Mo Farah wearing a plain Nike T-shirt and another person wearing what I presume is Nike clothing. Beneath this a button marked "SHOP THE COLLECTION". This takes the user to pages offering Nike clothing and shoes for sale under the heading "MENS NOTHING BEATS A LONDONER". My assessment is the same. In my judgment, some consumers would perceive LDNR to mean Londoner in this context, but some would not. Moreover, of those who perceived LDNR to mean Londoner, some would perceive it also to be being used as a brand name. Although the Nike website pages (also paragraph 56 above) differ in detail from the app, they are similar and my conclusions are the same.
vii) Lastly, I will consider the Google advert (paragraph 58 above). This read as follows:
"Nike LDNR | Nothing Beats a Londoner | nike.com
Check Out The Film & Get Ready To Represent Your City. Sign Up & Join The Events. Free Fast Delivery. Shop On The Nike App. 30-Day Free Returns. Gift Cards. Official Online Store. 10% Student Discount. Gift Shop. Types: Shoes, Tops, Tracksuits, Hoodies, Tights, Shorts, Backpacks."
My assessment is the same. In my judgment, some consumers would perceive LDNR to mean Londoner in this context, but some would not. Moreover, of those who perceived LDNR to mean Londoner, some would perceive it also to be being used as a brand name.
Infringement under Article 10(2)(c) of the Directive/Article 9(2)(c) of the Regulation
Defence under Article 14(1)(b) of the Directive/Article 14(1)(b) of the Regulation
"The mere fact that there exists a likelihood of aural confusion between a word mark registered in one Member State and an indication of geographical origin from another Member State is therefore insufficient to conclude that the use of that indication in the course of trade is not in accordance with honest practices. In a Community of 15 Member States, with great linguistic diversity, the chance that there exists some phonetic similarity between a trade mark registered in one Member State and an indication of geographical origin from another Member State is already substantial and will be even greater after the impending enlargement."
i) whether the defendant knew of the existence of the trade mark, and if not whether it would have been reasonable for it to conduct a search;
ii) whether the defendant used the sign complained of in reliance on competent legal advice based on proper instructions;
iii) the nature of the use complained of, and in particular the extent to which it is used as a trade mark for the defendant's goods or services;
iv) whether the defendant knew that the trade mark owner objected to the use of the sign complained of, or at least should have appreciated that there was a likelihood that the owner would object;
v) whether the defendant knew, or should have appreciated, that there was a likelihood of confusion;
vi) whether there has been actual confusion, and if so whether the defendant knew this;
vii) whether the trade mark has a reputation, and if so whether the defendant knew this and whether the defendant knew, or at least should have appreciated, that the reputation of the trade mark would be adversely affected;
viii) whether the defendant's use of the sign complained of interferes with the owner's ability to exploit the trade mark;
ix) whether the defendant has a sufficient justification for using the sign complained of; and
x) the timing of the complaint from the trade mark owner.
i) Nike knew about the Trade Marks.
ii) Nike do not rely upon any legal advice they may have obtained.
iii) I have concluded that LDNR would be seen at least in part as a trade mark for Nike's goods.
iv) Nike did not know that Frank objected, but I consider that they should have appreciated that it was likely that Frank would object. In any event, bearing in mind that this claim is partly quia timet, Nike know now.
v) Nike did not know that there was a likelihood of confusion, but in my view they should have appreciated that there was at least a risk of it. In any event, Nike know now.
vi) There has been actual confusion. Nike did not know this when they started, but they know now.
vii) The Trade Marks have a small but growing reputation. Nike did not know this when they started, but they know now. They should now also appreciate that there is a real risk of the Trade Marks' reputation being swamped in the event Nike continues its use of LDNR.
viii) For the reason I have just given, continued use of LDNR by Nike would interfere with Frank's ability to exploit the Trade Marks.
ix) In my view Nike does not have a sufficient justification for using LDNR. It is not an established abbreviation for Londoner. Nike could use Londoner or LDN (which Frank has confirmed it does not object to).
x) Frank complained very promptly.
Summary of principal conclusions
i) the Trade Marks are validly registered;
ii) Nike have infringed the Trade Marks pursuant to Article 10(2)(b) of the Directive/Article 9(2)(b) of the Regulation;
iii) Nike have not made out their defence under Article 14(1)(b) of the Directive/Article 14(1)(b) of the Regulation; and
iv) Frank's claim for passing off succeeds.