1 octobre 2018

Do four letters make a Londoner?

The background

Frank, a medium-high end casual clothing retailer owns UK and EU registered trade marks for LNDR for clothing, dating from February 2015 and March 2016.

The sign was used for ladies' sportswear and the LNDR range of products has been sold in a variety of high end outlets from late 2015 onwards. Frank's sales increased substantially for the following years (tripling between 2016 and 2017).

In January 2018, Nike launched the "Nothing beats a Londoner" marketing campaign, with extensive use of LDNR accompanied by the Swoosh mark.

Frank brought an action for trade mark infringement in IPEC due to the confusing similarity of the signs and also claimed passing off.

Nike argued in return that Frank's marks were invalid due to their descriptiveness: an average consumer would perceive them as an abbreviation of "Londoner", and therefore he/she would not see that as the origin of the goods.

Nike also claimed that the Swoosh was so well-known that its use with LDNR would be perceived by the average consumer as referring to Nike's goods.

Frank replied that "Londoner" was not a characteristic of clothing and that the use of the Swoosh could still be interpreted as there being some form of collaboration between Frank and Nike.

Arnold J delivered his judgement on the case.

The validity of the marks

The judge found that LNDR and LDNR were similar, and therefore could be perceived as meaning the same thing. The evidence provided by Nike that LNDR and LDNR meant Londoner came mainly from social media posts, accompanied by a handful of other websites. It did not however include any dictionary definition (including informal ones like Wikipedia or the Urban Dictionary).

Arnold J thus concluded that LDNR and LNDR could be understood as Londoner when "the meaning [was] generally clear from the context – typically a photograph of a London landmark or feature and/or captions referring to London or London-related events or topics".

Therefore, LDNR was not an established abbreviation of Londoner like LDN was for London. LDNR was therefore capable of being used by traders and understood by some consumers as a brand name for goods in the appropriate context. The UK and EU registered marks were valid.

Infringement and passing off

There was no issue that Frank had goodwill in LNDR. A key question was whether Nike's use of LDNR together with the Swoosh still constituted use of LDNR causing confusion as to the origin of the goods concerned.

Frank provided a small amount of evidence of direct confusion from employees and business customers who though there was a collaboration between both marks. However, Frank also provided indirect evidence that within days of the launch of the Nike campaign, the daily traffic to Frank's website nearly doubled – with a large increase in the number of male visitors even though Frank only sold women's clothing at that point. Arnold J saw no other explanation than people having mistaken LNDR for LDNR when searching for Nike's campaign site.

Accordingly, infringement and passing off were found.