A clothing brand has been successful in preventing Nike from using the term ‘LDNR’ in its ‘Nothing beats a LDNR’ advertising campaign, based on an earlier trademark.
The English High Court handed down its judgment on Wednesday, July 25.
Australia-based Frank Industries is a clothing manufacturer that owns UK-based women’s sportswear brand LNDR. The company owns the UK trademark ‘LNDR’ (number 3,095,285) for goods including clothing and sportswear.
In early 2018, Nike began using the letters ‘LDNR’ in relation to its ‘Nothing beats a LDNR’ UK campaign. The letters were intended to reference the term ‘Londoner’, meaning somebody from London.
Nike’s campaign featured its well-known ‘Swoosh’ mark on a black background, underneath the letters ‘LDNR’, with another image featuring the same devices but with the added words “Nothing beats a”.
Frank filed a complaint for trademark infringement in February 2018. The following month, the clothing company was granted an interim injunction that forced Nike to halt the campaign.
While ‘LNDR’ is in reference to the word launder (in relation to clothing), Frank said that it could also use ‘LNDR’ as a reference to Londoner. According to the company, this explanation suited the LNDR brand as it is based in London and inspired by the active lifestyle of a large city.
According to the court, the main issue in the dispute is how the average consumer would perceive the signs ‘LNDR’ and ‘LDNR’ in the context of the term Londoner and the city of London.
Jamie McCall, senior marketing director for Nike UK and Ireland, told the court that the company has a history of using the vowels of cities to give “geographical identifiers” together with the ‘Swoosh’ mark. For example, Nike has used NYC to represent New York City.
McCall said that Nike has been using LDN to identify with London residents for approximately six to eight years.
However, Frank argued that some consumers may be made to believe that Nike’s use of LDNR may indicate a collaboration between the two companies. Mr Justice Arnold said that Frank supplied sufficient evidence to support this conclusion.
He said that “the close and confusing similarity between the trademarks and ‘LDNR’, the identity of goods and the moderate degree of attention paid by the average consumer all points towards a likelihood of confusion”.
Frank was also successful in its claim of passing off.
As a result, Arnold ruled that Nike had infringed Frank’s trademark.
“It was a brave decision to sue a company as big as Nike,” commented Arty Rajendra, head of IP disputes at Osborne Clarke, which represented LNDR.
“However, LNDR has a growing reputation and positions itself as a premium brand. It could not sit by and let Nike damage its brand.”
Joanna Turner, founder of LNDR, said the company can now focus on building its brand.
“We work very hard to create the best premium, high-quality products in the market, and confusion of our products or brand with Nike would be extremely damaging," she said.
“It was not an easy decision to go up against a giant like Nike, and it is not a situation you imagine you will ever have to take on. We are both pleased and relieved that the judge saw things the same way as we did."