Interim injunction granted to restrain use of trademark

Jonathan Scrine

In Frank Industries Pty Ltd v Nike Retail BV & Others (02/03/2018), the owner of the trade mark “LNDR” used on upmarket activewear for ladies was granted an interim injunction to prevent the Nike group using “LDNR” as part of their “Nothing beats a Londoner” promotional campaign.

The claimant sold upmarket active wear for ladies under the “LNDR” name, for which it held a UK trade mark and an international trade mark designating the EU.

In January 2018 Nike began a promotional campaign entitled “Nothing beats a Londoner”, which used the abbreviation “LDNR” on clothing and in other ways.

The claimant’s case was that there was evidence of actual confusion on the basis that people believed that there was an association between the defendants and LNDR, that the goodwill in the LNDR brand would be taken downmarket and that the LNDR brand would be detrimentally affected. The defendants argued that their use of LDNR was descriptive and not a trade mark use.

The Court decided (applying American Cyanamid principles):

– Damages would not be an adequate remedy for the claimant. The court was satisfied that sufficient prejudice would be caused to the claimant’s brand before trial that could not be adequately compensated in damages because there was a risk that it would be fatally diluted by association with the defendants.

– There was clearly a serious issue to be tried of confusion and hence infringement.

– The balance of prejudice or convenience came down in favour of granting an injunction. It was possible for the defendants’ campaign to continue without using LDNR. On the other hand, if they were not prevented from using LDNR and continued to do so, the claimant might completely lose control of its reputation and goodwill and it was difficult to see how that position could then be reversed.

A trial was only 3-5 months away so the Nike campaign could be paused.

The claimant offered a cross-undertaking of £500,000 and it was very unlikely that the effect of the injunction would cause damage to the defendants in excess of that sum.

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