Trade marks: validity and infringement in the context of abbreviations

Background

Marks that are devoid of any distinctive character are not registrable and if registered may be revoked for invalidity (section 3(1)(b), Trade Marks Act 1994; Article 7(1)(b), EU Trade Mark Regulation (207/2009/EC)) (TMA) (EUTM Regulation).

Marks that indicate the characteristics of the goods or services with which they are associated or their geographical origin (descriptive marks) are not registrable and if registered may be revoked for invalidity (section 3(1)(c), TMA; Article 7(1)(c), EUTM Regulation).

A registered trade mark owner of an EU or UK trade mark has the right to prevent unauthorised third parties from using, in the course of trade, an identical or similar sign for identical or similar goods or services to those for which the trade mark is registered, where there exists a likelihood of confusion or association on the part of the public.

Facts

F owned UK and EU trade marks consisting of the letters LNDR. The marks were registered in 2015 and 2016 in respect of clothing, including ladies' sportswear.

In 2018, N launched a "nothing beats a Londoner" advertising campaign. The campaign used the sign LDNR and devices which included those letters in combination with N's well-known "swoosh" mark.

F claimed that N's use of LDNR created a likelihood of confusion and therefore infringed its marks.

N argued that F's marks were invalid because they were inherently descriptive. N argued that LNDR was perceived by the average consumer to be an abbreviation of "Londoner". On infringement, N argued that its marks were so well known that the average consumer would see the use of LDNR along with the "swoosh" as advertising N goods. N also argued that the average consumer would understand LDNR to be an abbreviation of "Londoner" and would not see it as referring to the origin of the goods.

F argued that, even if LNDR was understood to be an abbreviation of "Londoner", it was not understood to denote any characteristic of clothing. On infringement, F argued that N's use of the "swoosh" did not preclude the possibility of consumers thinking that its use of LDNR connoted some sort of collaboration with F.

Decision

The court held that F's trade marks were valid and infringed. Contemporary consumers in the UK, particularly younger ones, were in the habit of writing and reading abbreviations in digital communication. Such abbreviations included those in which vowels were omitted from words, and they could be used and understood because the context made their intended meaning clear. The average consumer was a member of the general public who bought clothing, in particular ladies' sportswear, and exercised a moderate degree of care and attention.

F's trade marks were not invalid. LNDR was inherently distinctive in relation to clothing and had a moderately strong distinctive character. N could not point to any dictionary or reference work which defined LNDR as "Londoner" at either of the relevant dates in 2015 and 2016. Instead, it relied on searches of the social media sites Instagram and Twitter. The evidence produced by those searches established that, when used in an appropriate context in digital media, LNDR was understood by some consumers to mean "Londoner". However, it did not establish that, when used in respect of clothing and without some signifying context, it would be perceived by the average consumer as meaning "Londoner". Still less did it establish that LNDR would be perceived as denoting some characteristic of clothing.

In 2018, LNDR had a moderately strong inherent distinctive character in relation to clothing, and although F's use was not sufficient to give it an enhanced distinctive character, it was enough to generate a protectable goodwill. There was a high degree of visual, aural and conceptual similarity between LNDR and LDNR, and it was plain that the two were confusingly similar.

The principal issue was whether N had used LDNR in relation to clothing. Again, N relied on Instagram and Twitter to establish that, as at January 2018, LDNR was understood to mean "Londoner". The posts and tweets showed that although some users were using LDNR to mean "Londoner", the meaning was generally made clear by the context. So, it could be understood by some consumers to mean "Londoner" when used in an appropriate context in digital media, but it was not an established abbreviation. N's advertising campaign had used LDNR in relation to clothing, LDNR played an independent distinctive role in each of the devices complained of, and while some consumers would see it as an abbreviation of "Londoner", others would perceive it as a brand name. It was likely that a significant number of consumers would think that N's use of LDNR indicated some form of collaboration with F. Indeed, F adduced evidence that three consumers had seen N's campaign and formed the impression that there was, or might be, some sort of collaboration between N and F. N had therefore infringed F's trade marks.

N had no defence under Article 14(1)(b) of the EUTM Regulation based on acquired distinctiveness through use. The fact that LDNR might be perceived by some consumers as meaning "Londoner" was not an indication of any characteristic of clothing. N had also not acted fairly as required by Article 14(2) of this defence. Even if it had acted fairly in the past, it would not be in accordance with honest practices in industrial and commercial matters for it to continue its use of LDNR.

Comment

This decision highlights the fact that a court will take into account the context of use when assessing how the public's perception of a mark and, in the context of infringement proceedings, the likelihood of confusion. The meaning is often only made clear by the context. While the necessary context may be present when an abbreviation is used in social media posts, it will often be lacking when it is used on packaging or in relation to services.

Also of note is the speed with which the case reached trial in the IPEC, including an interim injunction application which was appealed. F commenced the claim in February 2018. An expedited trial was heard, and judgment given, in July 2018, just five months later.

Case: Frank Industries Pty Ltd v Nike Retail BV and others [2018] EWHC 1893 (Ch).

First published in the September 2018 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.