Frank Industries Pty Ltd v Nike Retail BV & Ors [2018] EWHC 1893 (Ch) (25 July 2018)

Frank Industries Pty Ltd v Nike Retail BV & Ors [2018] EWHC 1893 (Ch) (25 July 2018)

LNDR was not perceived by the average consumer as meaning 'Londoner' in relation to clothing at the relevant dates and was inherently distinctive. Nike's evidence did not establish that LNDR denoted a characteristic of clothing or was descriptive. Nike's use of LDNR did not infringe Frank's trademarks, and Frank's trademarks are validly registered.

Citation
[2018] EWHC 1893 (Ch)
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 / Final Judgment
Outcome
Claimant's trademarks upheld; no infringement by Defendants; Defendants' counterclaim for invalidity dismissed.
Legal Topics
Trademark Validity, Trademark Infringement, Passing Off, Distinctiveness, Likelihood of Confusion
Intellectual Property Trademark Law Trademark Validity Trademark Infringement Passing Off Distinctiveness Likelihood of Confusion

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Parties

Frank Industries Pty Ltd

Claimant

Nike Retail BV

Defendant

Nike European Operations Netherlands BV

Defendant

Nike (UK) Limited

Defendant

Procedural Posture

Intellectual Property / Final Judgment

Legal Issues

  1. 1 Whether 'LNDR' is inherently descriptive or distinctive for clothing
  2. 2 Whether Nike's use of 'LDNR' infringes Frank's trademarks
  3. 3 Whether Frank's trademarks are invalidly registered

Ratio Decidendi

LNDR was not perceived by the average consumer as meaning 'Londoner' in relation to clothing at the relevant dates and was inherently distinctive. Nike's evidence did not establish that LNDR denoted a characteristic of clothing or was descriptive. Nike's use of LDNR did not infringe Frank's trademarks, and Frank's trademarks are validly registered.

Court Disposition

Claimant's trademarks upheld; no infringement by Defendants; Defendants' counterclaim for invalidity dismissed.

Orders

  • Frank's trademarks remain valid.
  • Nike's counterclaim for invalidity dismissed.