Osborne Clarke has represented premium activewear brand, LNDR (pronounced L-N-D-R), in an IP dispute against global sportswear giant, Nike, over Nike's use of 'LDNR' in a recent advertising campaign.
Nike's "Nothing Beats a Londoner" advertising campaign commenced in January 2018 and featured prominent use of 'LDNR' on social media, live events, merchandising giveaways and store displays. The TV advert for the campaign included the likes of Sir Mo Farah, Harry Kane and Skepta (seen wearing a t-shirt emblazoned with 'LDNR'). Osborne Clarke obtained an interim injunction against Nike requiring Nike to cease using 'LDNR' until the underlying trade mark dispute was determined in a trial fixed for July 2018. The Court of Appeal substantially upheld the interim injunction. Nike subsequently removed the TV advert from YouTube which had received nine million hits.
The trial took place on 12 and 13 July in the Intellectual Property Enterprise Court (IPEC) and just 12 days later, the judgment was handed down by Mr Justice Richard Arnold who decided that LNDR's claims for trade mark infringement and passing off succeeded and that Nike's invalidity attacks and defences failed.
The Osborne Clarke team representing LNDR is Partner Arty Rajendra, Associate Nick Kempton and Trainee Solicitor Charlotte Groom. Osborne Clarke instructed Douglas Campbell QC and Georgina Messenger of Three New Square.
The team successfully argued that LNDR was distinctive as a trade mark, and that consumers would be confused into thinking Nike were collaborating with LNDR. The team relied on evidence from members of the public who were actually confused into thinking there was a commercial tie-up between the two brands. What's more, Nike had conducted a trade mark search six months before launching their campaign and knew about LNDR's trade marks, but went ahead with using 'LDNR' regardless.
Nike argued that the LNDR name was descriptive and the trade marks were invalid. They also argued that Nike's use of 'LDNR' was not in relation to clothing and was simply descriptive of Londoners. Nike denied that confusion or any other type of damage would occur.
The judgment considers how brands use social media to engage with their consumers and is likely to have implications for how social media evidence is used in IP disputes in future, particularly to try to show descriptiveness.
Nike have not yet indicated whether they intend to apply for permission to appeal.
Commenting on the outcome, Osborne Clarke's Head of IP Disputes in the UK Arty Rajendra said:
"This case showcases the speed at which the English IP court acts when a case is urgent. We issued the claim in February 2018, obtained an interim injunction in March 2018, got it substantially upheld by the Court of Appeal later that month, and had a trial in July 2018, with judgment being given 12 days later. It was a lot of hard work over a six month period, which would normally be done over 12-18 months. We are absolutely delighted with the result, particularly because we love the LNDR brand and admire the success its founders have achieved so far. It was a brave decision to sue a company as big as Nike. However, LNDR has a growing reputation and positions itself as a premium brand. It could not sit by and let Nike damage its brand."
Osborne Clarke’s international IP team act for leading consumer, retail, technology and media companies and regularly manage high value and business-critical IP litigation, providing advice on everything from brand management and enforcement to Standard Essential Patents and FRAND licensing.