Background
The claimant is Lidl, the well known German discount supermarket who entered the UK market in 1994.
The defendant is Tesco who are the largest supermarket chain in the UK.
Lidl use yellow circle logos as set out below:
The case centres around Tesco’s use since September 2020 of signs comprising a yellow circle on a square with a blue background:
Lidl claimed that Tesco had infringed their trade marks, committed passing off and infringed Lidl’s copyright in the mark and text as an artistic work. Unusually in the trade mark case Lidl relied not on arguing that the marks were similar and there was confusion but on reputation in their mark and that Tesco was taking unfair advantage of their reputation in their marks based on their reputation as a good value supermarket.
Tesco counterclaimed for revocation of Lidl’s UK trade mark registrations for the plain yellow circle marks.
First Instance Decision
At the High Court, it was found that Tesco had infringed Lidl’s trade marks and they also found passing off. Use of the Tesco logos was found to be taking unfair advantage of the reputation associated with Lidl’s logos indicating low prices. The High Court also found there to be copyright infringement. On the other side Tesco were successful in revoking Lidl’s plain circle registrations on the basis of bad faith in that they filed them with no intention to use them and that they were filed as a ‘legal weapon’.
Appeal
On Appeal, the court has upheld the previous judgement on trade mark infringement and Passing Off but not copyright infringement but this does not alter the overall outcome for Tesco.
It is clear from the case that had the appeal judges heard the matter at first instance they may not have reached the same conclusions. The judges felt bound to accept the first instance assessment of the evidence filed.
What can we learn from the case:
When creating trade marks and logos it is important to log the creative process and save information relating to how concepts and logos are created. This will help in terms of defending any claims of bad faith and will also assist in copyright cases.
The practice of trying to keep a mark on the register to stop others so called ‘evergreening’, will not be accepted and it proved a useful defence in this case.
Evidence is key to these types of proceedings and perhaps more could have been done evidentially on some of the pleadings and in their defences.
Will further appeals follow…. we will have to wait and see but given the detailed judgement this may not happen.
The full case can be accessed here https://www.bailii.org/ew/cases/EWCA/Civ/2024/262.html
Please do not hesitate to contact Heather Donald or one of our team at Fry Heath Spence if you require any further information.