Just Do It … before it’s too late!

A recent ruling in the Intellectual Property Enterprise Court (IPEC) and its subsequent amendment in the Court of Appeal highlights the significance of interim injunctions in trade mark infringement cases, particularly where the infringement takes place in the context of social media.

In Frank Industries v Nike the court was required to consider whether Nike’s use of the mark “LNDR” was an infringement of Frank Industries’ registered trade marks. Nike had launched a campaign focussed on the notion that “nothing beats a Londoner” and used the slogan “LDNR” as an abbreviation. As well as using the mark on its clothing, Nike had disseminated significant social media content using the mark, including Twitter posts and Youtube videos.

Frank Industries, which brought a claim for trade mark infringement and passing off, sells women’s sportswear using the name “LDNR” and has the benefit trade marks covering both the UK and EU in respect of that name relating to clothing and sportswear. In addition, Frank Industries were able to show that it had significant goodwill by virtue of the fact that it had been trading since 2015, selling sportswear worldwide. Accordingly, an interim injunction was sought to prevent Nike’s alleged infringement, pending completion of the case. Frank asserted that it has evidence of actual confusion as a result of Nike’s use of the mark and argued that an interim injunction was necessary so as not to dilute its goodwill in the mark.

In considering whether an interim injunction was necessary, the IPEC observed that Frank Industries would be prejudiced before the trial if Nike continued to use the mark and accordingly the court ruled that damages could not provide an adequate remedy. In addition to this, the court found that Frank’s goodwill would be significantly damaged if Nike was allowed to use the mark up to trial. The court accordingly ordered an interim injunction on this basis, with Frank Industries offering a cross undertaking of £500,000.00 to cover any potential damage to Nike which would be caused by the injunction in the event that Frank Industries did not succeed at trial. The IPEC found that, whilst Nike would suffer some detriment from being prevented from using the mark, this was unlikely to exceed the value of £500,000.00 and in any event it could continue its campaign without use of the name “LDNR”.

The affect of the injunction order as granted by IPEC would be particularly far reaching in that it required Nike to remove all references to “LDNR” from its social media, effectively meaning it would have to delete all Twitter posts and Youtube videos. Nike appealed against the extent of the order and the Court of Appeal was accordingly required to consider whether the order, as granted by IPEC should stand.
The Court of Appeal found that the order was too onerous and sought to strike a balance between the parties by amending the order in respect of the social media content. In particular, Nike was permitted to retain its Twitter posts but had to archive any Instagram posts showing the mark. Similarly, it was allowed to maintain its Youtube videos but had to blur out the mark.

The decisions are an important reminder to businesses that, provided they act early, they can seek to protect their trade marks and goodwill with injunctive relief in order to negate the damage caused by any infringing acts until a final decision can be made. It also highlights that, whilst the courts must seek to consider the balance of convenience between the parties when deciding to grant an interim injunction, this will not always be straight forward and there will be occasions where such an order will result in rather burdensome requirements of one party.

Finally, and perhaps most importantly, the case serves to reinforce the fact that interim injunctions are a powerful tool available to claimants in trade mark infringement and passing off claims and that such orders will carry significant consequences for the party accused of infringement. Accordingly, delay should be avoided at all costs so as not to prejudice the likelihood of obtaining such a remedy.