Trademarks: abbreviations: infringement

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    Trademarks: abbreviations: infringement

    Arnold J has held in the High Court that the trade mark LNDR was valid in relation to clothing, and was infringed by the use of the sign LDNR in relation to identical goods.

    Contemporary consumers in the UK, particularly younger ones, were in the habit of writing and reading abbreviations in digital communication. Such abbreviations could often be used and understood because the context made their intended meaning clear. However, the evidence did not establish that, when used in respect of clothing and without some signifying context, it would be perceived by the average consumer as meaning “Londoner”. Still less did it establish that LNDR would be perceived as denoting some characteristic of clothing.

    There was a high degree of visual, aural and conceptual similarity between LNDR and LDNR, and it was plain that the two were confusingly similar. The passing off claim stood or fell with the infringement claim, so that too succeeded.

    This case highlights the fact that a court will take into account the context of use when assessing the public’s perception of a mark and, in the context of infringement proceedings, the likelihood of confusion. The meaning is often only made clear by the context. (Frank Industries Pty Ltd v Nike Retail BV and others [2018] EWHC 1893 (Ch), 25 July 2018.)

    Facts

    Frank, a clothing manufacturer, owned UK and EU trade marks consisting of the letters LNDR. The marks were registered in respect of clothing, including sportswear, and took effect from February 2015 and March 2016. The marks related to a premium range of ladies’ sportswear.

    In January 2018, the global clothing supplier Nike launched a “nothing beats a Londoner” advertising campaign aimed at young Londoners. The campaign used the sign LDNR and devices which included those letters in combination with Nike’s well-known “swoosh” mark.

    Frank claimed that Nike’s use of LDNR created a likelihood of confusion and therefore infringed its marks under Article 10(2)(b) of the 2015 Trade Marks Directive ((EU) 2015/2436) (TM Directive) and Article 9(2)(b) of the EU Trade Mark (EUTM) Regulation ((EU) 2017/1001).

    Nike argued that Frank’s marks were invalid under Article 4(1)(c) of the TM Directive and Article 7(1)(c) of the EUTM Regulation because they were inherently descriptive: LNDR, it argued, was perceived by the average consumer to be an abbreviation of “Londoner”. As to infringement, it argued that its marks were so well known that the average consumer would see the use of LDNR along with the swoosh as advertising Nike goods. It also contended that the average consumer would understand LDNR to be an abbreviation of “Londoner” and would not see it as referring to the origin of the goods. Frank argued that even if LNDR was understood to be an abbreviation of “Londoner”, it was not understood to denote any characteristic of clothing. On the infringement point, it argued that Nike’s use of the “swoosh” did not preclude the possibility of consumers thinking that its use of LDNR connoted some sort of collaboration with Frank.

    Decision

    Arnold J found Frank’s trade marks valid and infringed.

    He considered the following points:

    • Contemporary consumers in the UK, particularly younger ones, were in the habit of writing and reading abbreviations in digital communication. Such abbreviations included those in which vowels were omitted from words, and they could be used and understood because the context made their intended meaning clear.
    • Average consumer. The average consumer was a member of the general public who bought clothing, in particular ladies’ sportswear, and exercised a moderate degree of care and attention.
    • Frank’s trade marks were not invalid: as at February 2015 and March 2016, LNDR was inherently distinctive in relation to clothing and had a moderately strong distinctive character. Nike could not point to any dictionary or reference work which defined LNDR as “Londoner” at either of the relevant dates. Instead, it relied on searches of the social media sites Instagram and Twitter. The evidence produced by those searches established that, when used in an appropriate context in digital media, LNDR was understood by some consumers to mean “Londoner”. However, it did not establish that, when used in respect of clothing and without some signifying context, it would be perceived by the average consumer as meaning “Londoner”. Still less did it establish that LNDR would be perceived as denoting some characteristic of clothing.
    • As at January 2018, LNDR had a moderately strong inherent distinctive character in relation to clothing, and although Frank’s use was not sufficient to give it an enhanced distinctive character, it was enough to generate a protectable goodwill. There was a high degree of visual, aural and conceptual similarity between LNDR and LDNR, and it was plain that the two were confusingly similar.
    • The principal issue was whether Nike had used LDNR in relation to clothing. Again, Nike relied on Instagram and Twitter to establish that, as at January 2018, LDNR was understood to mean “Londoner”. The posts and tweets showed that although some users were using LDNR to mean “Londoner”, the meaning was generally made clear by the context. Thus, it could be understood by some consumers to mean “Londoner” when used in an appropriate context in digital media, but it was not an established abbreviation. A review of Nike’s advertising campaign showed that it had used LDNR in relation to clothing, that LDNR played an independent distinctive role in each of the devices complained of, and that while some consumers would see it as an abbreviation of “Londoner”, others would perceive it as a brand name. It was likely that a significant number of consumers would think that Nike’s use of LDNR indicated some form of collaboration with Frank. Indeed, Frank adduced evidence that three consumers had seen Nike’s campaign and formed the impression that there was, or might be, some sort of collaboration between Nike and Frank. It did not matter that all three had personal connections with Frank. Nike had therefore infringed Frank’s trade marks.
    • Passing off. Because the passing off claim stood or fell with the infringement claim, that too succeeded.
    • Nike had no defence under Article14(1)(b) of either the TM Directive or the EUTM Regulation. The fact that LDNR might be perceived by some consumers as meaning “Londoner” was not an indication of any characteristic of clothing (Gerolsteiner Brunnen GmbH & Co v Putsch GmbH (Case C-100/02) EU:C:2004:11 followed). Moreover, Nike had not acted fairly as required by Article14(2). Even if it had acted fairly in the past, it would not be in accordance with honest practices in industrial and commercial matters for it to continue its use of LDNR (Samuel Smith Old Brewery (Tadcaster) v Lee (t/a Cropton Brewery) [2011] EWHC 1879 (Ch) applied).

    Comment

    This case highlights the fact that a court will take into account the context of use when assessing how the public’s perception of a mark and, in the context of infringement proceedings, the likelihood of confusion. The meaning is often only made clear by the context. While the necessary context may be present when an abbreviation is used in social media posts, it will often be lacking when it is used on packaging or in relation to services. The defendant’s case on validity was not helped by the fact that the claimant’s mark omitted one of the consonants of “Londoner” as well as all its vowels.

    Practical Law PLC 7.8.17