Author: Ben Milloy
Ben Milloy, Associate, Fladgate LLP (firstname.lastname@example.org)
A July 2018 decision of the UK Intellectual Property Enterprise Court (IPEC) appears to have put paid to Nike’s recent “Nothing beats a Londoner” ad campaign. The case highlights, with hindsight, a perhaps regrettable commercial/legal decision by the sports giant, whilst also demonstrating the usefulness of the IPEC as a means of speedy and effective redress in David vs Goliath disputes.
Nike’s campaign, which was built around the “LDNR” brand, launched in January with a short film featuring a number of sports stars and musicians of recognisable London origin. While the campaign generated a good deal of hype, it also caught the attention of modestly-sized apparel company Frank Industry Proprietary Limited (Frank), who held registered UK and EU trade marks for “LNDR” covering goods such as clothing and sportswear.
Frank made an application to the IPEC and on 2 March 2018 successfully obtained a temporary injunction preventing Nike’s use of the LDNR brand, as well as an order for an expedited trial. Four months on, Frank has now obtained a judgment that Nike infringed its LNDR marks, effectively preventing any further use by Nike of the LDNR brand.
Nike has the option to appeal the decision; however, the wisdom of such a move is dubious, not unlike the decision to adopt the brand in the first place. In terms of the legal test for infringement, this case is, and was, a bit of Michael Jordan-style “slam dunk”, comprising highly similar (indeed, those skim-reading might think, identical) signs and identical goods.
Before launching any new brand, a well-advised business will consider the availability and “protectability” of its proposed brand. An availability or “clearance” check can be either a quick and dirty “desktop” search (namely, a review of the relevant trade mark registry website and cursory Google search), or a more comprehensive search offered by certain third parties. When reviewed by a trade mark professional, either search will likely highlight any issues quickly, and can inform decisions about branding at an early stage.
In this case, we know Nike did carry out an availability search and found the Frank LNDR marks. We cannot know exactly what advice Nike received as it made use of legal privilege to protect the content. Instead, we can only speculate that it ran along similar lines to the argument put forward in the proceedings: that the Frank LNDR marks were invalid on the grounds that they were recognisable as meaning “Londoner” and therefore “inherently descriptive”. However, as can be seen from the relatively short shrift given to this argument in the IPEC judgment, “LNDR” (or even “Londoner”) is in no way descriptive of clothing, and so this defence doesn’t pass muster.
All in all, the decision to run with the campaign begs the question: did Nike take good advice? Did it perhaps take a high-handed view that a relative minnow like Frank would not, or could not afford to, stand up for itself? Alternatively, was “Nothing beats a Londoner” always intended as a short term campaign? The latter seems unlikely as, even in an age of viral buzz and scarily-sized marketing budgets, it makes little commercial sense to invest in a strategy that does not have the possibility of a medium to long term future.
Whatever the reasons behind Nike’s actions, the speed with which Frank was able to obtain the injunction and judgment is instructive for big brand businesses, who might previously have thought their size and resources would intimidate smaller brands looking to enforce their rights. It also represents the IPEC, designed to adjudicate disputes quickly and inexpensively, delivering on its mission.