The Court of Appeal has upheld part of an interim injunction granted to Australian sportswear company Frank Industries which restrained Nike from using the sign LDNR in its “Nothing Beats a Londoner” advertising campaign. However, the Court varied the part that required Nike to mandatorily delete references to the LDNR sign from social media.

In a judgment that recognised the importance of social media advertising to brand awareness (Frank Industries PTY Ltd v Nike Retail BV [2018] EWCA Civ 497 (13 March 2018)), Lewison LJ found that the judge had not considered the potentially irreversible consequences of the mandatory part of the order and had formed his views on the basis of no real evidence. The injunction was therefore varied to allow Nike, amongst other things, to archive Instagram posts and to blur or pixelate YouTube videos so far as necessary, rather than re-edit or take them down completely.

The Claimant, Frank Industries PTY Ltd, is an Australian company which designs and sells sportswear for women and owns UK and EU trade marks for the letters LNDR. In January 2018, its solicitors wrote to Nike complaining of the use of the sign “LDNR” in Nike’s “Nothing beats a Londoner” advertising campaign. As Lewison LJ observed, that sign used the same upper case letters as Frank Industries’ marks, but in a slightly different order.

Nike did not use these letters as a stand-alone sign but used them in conjunction with the “Nike Swoosh” and the words “Nothing beats a”. Nike did not immediately respond to the letter but continued its activities and launched a video on YouTube the following week which incorporated the sign.

On 19 February, Frank Industries duly issued proceedings seeking an injunction restraining Nike from infringing its marks and from passing off, and an order for delivery up or destruction of infringing material. At first instance, His Honour Judge Hacon granted an interim injunction. Read more from lexology.com…

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