Frank Industries Pty Ltd v Nike Retail BV & Ors

Frank Industries Pty Ltd v Nike Retail BV & Ors

The trade marks 'LNDR' are inherently distinctive for clothing and not descriptive. Nike's use of 'LDNR' in the contexts complained of was likely to cause confusion among a significant number of consumers, some of whom would believe there was a collaboration or connection between Frank and Nike. Nike's defence under Article 14(1)(b) fails because 'LDNR' is not an established abbreviation for 'Londoner', and Nike's continued use would not be in accordance with honest practices. Frank's claim for passing off also succeeds as it stands or falls with the trade mark infringement claim.

Parties
Claimant: Frank Industries Pty Ltd; Defendant: Nike Retail BV; Defendant: Nike European Operations Netherlands BV; Defendant: Nike (UK) Limited
Jurisdiction
England and Wales
Judgment Date
25 July 2018
Procedural Posture
Intellectual Property (trade Mark) / Judgment After Expedited Trial
Outcome
Judgment for the Claimant
Legal Topics
Trade Mark Infringement, Passing Off, Distinctiveness of Trade Marks, Likelihood of Confusion, Defences to Infringement
Intellectual Property Law Trade Mark Infringement Passing Off Distinctiveness of Trade Marks Likelihood of Confusion Defences to Infringement

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 16 Party arguments 2 Amounts and remedies 9
Sign in to unlock

Parties

Frank Industries Pty Ltd

Claimant

Nike Retail BV

Defendant

Nike European Operations Netherlands BV

Defendant

Nike (UK) Limited

Defendant

Procedural Posture

Intellectual Property (trade Mark) / Judgment After Expedited Trial

Legal Issues

  1. 1 Whether the trade marks 'LNDR' are validly registered or inherently descriptive
  2. 2 Whether Nike's use of 'LDNR' infringes Frank's trade marks under Article 10(2)(b) of the Directive/Article 9(2)(b) of the Regulation
  3. 3 Whether there is a likelihood of confusion between 'LNDR' and 'LDNR' in the context of clothing

Ratio Decidendi

The trade marks 'LNDR' are inherently distinctive for clothing and not descriptive. Nike's use of 'LDNR' in the contexts complained of was likely to cause confusion among a significant number of consumers, some of whom would believe there was a collaboration or connection between Frank and Nike. Nike's defence under Article 14(1)(b) fails because 'LDNR' is not an established abbreviation for 'Londoner', and Nike's continued use would not be in accordance with honest practices. Frank's claim for passing off also succeeds as it stands or falls with the trade mark infringement claim.

Court Disposition

Judgment for the Claimant

Orders

  • Declaration that the Trade Marks are validly registered
  • Declaration that Nike has infringed the Trade Marks under Article 10(2)(b) of the Directive/Article 9(2)(b) of the Regulation