Legal Update: Lidl Lookalike Injunction Extended Across Great Britain

20 August 2021

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At the request of the producers of Hendrick’s Gin, the Scottish Court of Session has extended an interim indirect, the equivalent of an interim injunction in Northern Ireland, to prevent Lidl from marketing their “Hampstead Gin” in its dark, apothecary-style bottle across the entirety of Great Britain.

This appeal follows the decision of the Scottish Court of Session to grant the injunction within Scotland only. Details of the original decision can be found here.

Appeal by Lidl

Following the approval of the original injunction, Lidl challenged the decision on the grounds that the IP judge had made a fundamental error in considering that the Hendrick’s Trade Mark (the “Trade Mark”) was not a colour mark. They argued that as the Hendrick’s Trade Mark showed a bottle which was white / clear, the registration was limited to those colours alone and should not prevent the sale of the dark coloured bottle used to sell Lidl’s Hampstead.

In response, the producers of Hendricks Gin, William Grant & Sons Limited (“Grants”), provided that the drawing used was to demonstrate a monochrome bottle, rather than a white bottle, as may be appropriate in the case of other spirit brands such as Malibu. Further, as the Trade Mark was not a colour mark, the bottle could be of any colour.

Following review of the arguments advanced, Lord Carloway was minded to agree with Grants’ submissions. It was noted by the court that Grants had marketed their product in a dark apothecary-style for some time and in turn considered that where there was no colour specified in a trade mark, extensive use of a particular colour can result in that colour being associated in the mind of the public with the trade mark [1] and as such, Lidl’s use of the same colour may be seen as taking unfair advantage of that mark.

In this instance, it was reasoned that whether or not there was an intention to deceive, there was a basis for showing that Lidl intended to benefit from Hendrick’s reputation as it was “difficult to view the re-design, including the change in colour of the bottle, as accidental or coincidental.” As such, the court found that the IP judge had correctly applied the law and dismissed the appeal.

Cross Appeal by Grants

In the same session, the court considered a cross appeal launched by Grants challenging the limitation of the injunction to Scotland. It was submitted by Grants that as the Trade Mark was registered in the UK and as the legislation breached was UK Statute, “it would be perverse if the court could not grant a UK wide interdict.”

It was noted by the court that as Lidl were domiciled in both Scotland, England and Wales, Grants had a choice of issuing proceedings in either jurisdiction. There was no need to raise separate actions in both jurisdictions and in fact doing so would have been an inefficient use of judicial and court time. As there was no issue of comity, Lord Carloway allowed the cross appeal and recalled the part of the IP judge’s interlocutor of 18 May 2021 which stated “in Scotland.”

Conclusion

The original decision of the court surprised observers by demonstrating that proprietors of registered trademarks may be able to rely on unfair advantage claims to combat against copycat products, even in circumstances where there is no actual or likelihood of confusion. The approval and extension of this order across Great Britain indicates that this shift may be here to stay. With many stores currently selling a variety of budget lookalike products this shift in attitude may open the floodgates and see a number of products disappear from our shelves.

If you would like any information or advice regarding the protection of your intellectual property, please do not hesitate to get in touch with our Litigation and Dispute Resolution team.

*This information is for guidance purposes only and does not constitute, nor should be regarded, as a substitute for taking legal advice that is tailored to your circumstances.

[1] Specsavers International Healthcare v Asda Stores [2013] ETMR 46 at para 41

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