Much has already been written about the first instance decision handed down last week in respect of the Lidl v Tesco ‘logos’ case. Quite possibly, it will be the most high profile trade mark case of 2023.
But perhaps what has been overlooked in all the media noise is the reason why Lidl (largely) succeeded. To adapt the well-known slogan from the 1992 US presidential campaign: “It’s the evidence, stupid”.
In brief, Lidl owned UK registered trade marks for the following two marks:
Lidl objected to Tesco adopting, for its Clubcard Prices promotion, a similar graphical device, formed of a blue square background and a yellow circle, with text written across the middle. For example:
Lidl asserted registered trade mark infringement (in respect of both The Wordless Mark and The Mark with Text), passing-off and copyright infringement.
Lidl did not assert that there would be confusion as to origin (i.e. that average consumers seeing the Tesco Clubcard signs would be confused into thinking the goods/services in question came from Lidl); rather they asserted that a substantial number of customers would see the Tesco Clubcard signs, link them to Lidl’s trade marks and their reputation for low price (discounted) ‘value’ and thus believe that Tesco’s prices were comparable to Lidl’s prices/they price matched to Lidl. This would cause detriment to Lidl’s brand (i.e. dilution of Lidl’s reputation as a low cost discounter, offering better value for money than other leading supermarkets, like Tesco) and would mean Tesco taking unfair advantage of (i.e. “freeriding” off) the reputation which resides in the Lidl marks.
The passing-off and copyright infringement claims succeeded.
Both registered trade mark infringement claims also succeeded, but (for reasons this article will not cover) The Wordless Mark was declared invalid.
In summary, the judge hearing the case concluded that some consumers who were aware of The Mark with Text, namely:
would, when coming across signs like the ones below, in Tesco’s stores, their advertisements and promotional materials:
associate and ‘link’ (i.e. bring to mind) the Tesco signs with Lidl’s The Mark with Text and (to the detriment of Lidl) there would be a “subtle but insidious” transfer of image (of ‘low price value’) from The Mark with Text to the Tesco’s signs in the minds of some consumers. An unfair advantage would be obtained by Tesco, by reason of the connection with Lidl’s The Mark with Text. Tesco’s “value perception” would be unfairly improved and advantaged by the association with Lidl’s reputation for offering value (i.e. quality products at affordable prices), with some consumers thinking that Tesco was guaranteeing the same product prices as Lidl, when that was not (in fact) always the case.
Many people might be surprised by the result.
However, after reading the judgment, it is clear that the judge hearing the case concluded there was sufficient evidence presented before her to support Lidl’s case for registered trade mark infringement.
As an experienced trade mark lawyer, I have realised over the years that you should never wholly rely on your initial reaction when assessing at the outset the merits of a trade mark infringement claim. Such claims are usually won and lost due to the evidence (or lack of) filed. The skill is to know what evidence to submit and where to find it….
For more information, please contact Carl Steele.
