Case law: Owner of trade mark 'LNDR' wins infringement claim against Nike for use of hashtag #LDNR on social media
Businesses considering using a hashtag on social media should ensure it is not identical or similar to an existing trade mark, or risk the trade mark owner taking legal action for infringement of the mark.
This update was published in Legal Alert - September 2018
Legal Alert is a monthly checklist from Atom Content Marketing highlighting new and pending laws, regulations, codes of practice and rulings that could have an impact on your business.
A company had registered 'LNDR' as both a UK and EU trade mark for clothing, footwear and headgear, and also for advertising and marketing purposes – expressly including use on 'social media, blogging and other forms of passive, shareable and viral communications'.
Later, Nike launched an advertising campaign specifically in London aimed at helping young athletes. It used the hashtag '#LDNR' (as an abbreviation of the word 'Londoner') and the maxim 'Nothing Beats a Londoner' on social media.
There was evidence that people seeing the hashtag assumed it was the company's trade mark and that the company and Nike must be collaborating on the campaign. This was not the case, and the company claimed infringement of its trade mark by Nike.
Nike argued the company's mark was invalid because it was simply an abbreviation of 'Londoner' and was therefore 'inherently descriptive' - insufficiently distinctive to be registered as a trade mark. It found many instances where people in London had used #LNDR on Twitter and Instagram as an abbreviation of Londoner
The company turned that around. It said that it was not using its mark as an abbreviation of Londoner – it sold trademarked products that had nothing to do with London – and argued that Nike's evidence of use of LNDR as such an abbreviation on social media was actually evidence of an increased likelihood of confusion if Nike used a similar hashtag.
The High Court found that an average consumer would assume LNDR to be an abbreviation of Londoner only if used in certain contexts, but these did not include its use in relation to clothing. It also ruled that the company had built up enough of a reputation in the LNDR mark as a brand in relation to clothing for the use by Nike of the hashtag #LDNR to infringe it.
- Businesses considering using a hashtag on social media should ensure that it is not identical or similar to an existing trade mark or risk the trade mark owner taking legal action against them for infringement of the mark
Case ref: Frank Industries Pty Ltd v Nike Retail BV  EWHC 1893
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