The supermarket wars continued on Wednesday 19 April, with Mrs
For context and a summary of the previous decision in this matter, see our previous article here.
At 102 pages, this latest judgment is not for the faint hearted. If you wish to peruse it yourself, then you can find it here. However, in summary, Smith J found in favour of Lidl on "its claims of trade mark infringement in respect of the Mark with Text, passing off and copyright infringement". There are several aspects to this judgment, which we will break down separately below.
TRADE MARK INFRINGEMENT
Lidl only claimed trade mark infringement under s10(3). However, the Judge did find consumer confusion as to origin. Under s10(3) and
Considering that direct evidence of change to consumer's behaviour can be difficult to obtain, Smith J instead read into "the fact that [Lidl] has found it necessary to take evasive action in the form of corrective advertising" as evidence of such a change in consumer behaviour.
COUNTERCLAIMS TO TRADE MARK INFRINGEMENT
In considering whether the Wordless Mark had distinctive character, the Judge determined that evidence of consumer confusion between
The Judge also dismissed
PASSING OFF
The main misrepresentation claimed in this case was that
Smith J found that Lidl's logo did evoke lower prices in the minds of consumers and a substantial number of the relevant public falsely believed that
COPYRIGHT INFRINGEMENT
Smith J rejected
Smith J also determined that although the authorship of the work had been "lost in the mists of time", Lidl had carried out a reasonable authorship search and therefore Lidl held the copyright in the work, following s. 104(5) CDPA 1988.
Although Smith J found that there was no subjective intention to take advantage in respect of the trade mark claim, she determined that, regardless,
Smith J then found that the similarities of
The Judge determined that
IMPORTANT TAKEAWAYS
The outcome of this case was heavily dependent on the facts and evidence before the court.
Obtaining broad protection: Somewhat surprisingly, Lidl's success was equally based on the Wordless Marks and the Mark with Text, with use of the latter being sufficient to support use of the former. This judgment seems to emphasise the importance of the colour and appearance of a brand as opposed to its name when establishing infringement. The concerns in this market over brand 'misappropriation' highlighted in the evidence also showed that wider brand associations beyond merely the retailer's name would be hugely relevant and may be even more so where 'lookalikes' feature.
Retention of commercial records from time of filing: The finding of invalidity of Lidl's marks highlights the difficulty of supporting enforcement of long-standing rights, which may have been obtained for good reason, but where records were not created or were since lost. Lidl's inability to provide the background rationale for filing the first Wordless Mark in 1995, and subsequent refilings led the court to presume that the applications were made in bad faith, purely to gain a legal weapon for the purpose of enforcement. This is particularly surprising given that the court had also found that there was genuine use of the Wordless Mark - it therefore appears that the presence of genuine use does not necessarily cure any absence of intention to use (or absence of evidence of such intention) at the time of filing.
Revival of Confusion as a relevant factor: The decision refers to a significant volume of evidence showing customer confusion. Trade mark infringement under s10(2) (being the relevant provision requiring a likelihood of confusion) had not been pleaded. Despite this, evidence of confusion was referred to in establishing passing-off, the 'link' under s10(3) and in supporting the finding of genuine use of the Wordless Mark. An absence of customer confusion in previous lookalikes cases had suggested that claims under s10(2) and passing off might not be appropriate in these types of cases. However, the availability of such evidence here, and the weight placed on it, suggests that it is important and relevant in supporting several of Lidl's claims.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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