Lidl Locked Down in Lookalike Litigation

21 July 2021

Gin_(1627783501)

At the request of the producers of Hendrick’s Gin, the Scottish Court of Session has granted an ‘interim interdict’, the equivalent of an interim injunction in Northern Ireland, to prevent Lidl from selling its own brand, “Hampstead Gin”.

Background

Hampstead Gin has been sold at Lidl stores for over a decade. However, following a redesign in late 2020 gin enthusiasts began to notice the similarities between the product and the ‘apothecary–style bottle’ infamous with Hendricks Gin.

The producers of Hendrick's Gin, William Grant and Sons Irish Brands Ltd, alleged that the redesign constituted a likelihood of confusion between the products subject to section 10 (2) of the Trade Marks Act 1994. They further argued that the redesigned bottle took advantage of the reputation of their trade mark under section 10 (3). Further that the redesign also amounted to an unlawful passing off.

Decision

Lord Clark held that there was no reasonable prospect of the Claimants establishing a likelihood of confusion with their trademark as Lidl was well-known for its own brand stock, and a consumer entering a Lidl store was not likely to be looking for or expecting to see Hendrick’s Gin or any third party brand. Similarly, Lord Clark felt that the Claimants had no prospect of meeting the requirements for misrepresentation in order to satisfy a claim of passing off.

Despite this, Lord Clark agreed with the Claimants argument that Lidl breached section 10 (3) of the Trade Marks Act 1994. In a written judgement, Lord Clark wrote:

"I find that there is a reasonable prospect of success for the pursuer in showing that the defenders intended to benefit from the reputation and goodwill of the pursuer’s mark. Whether or not there was a deliberate intention to deceive, there is a sufficient basis for showing that there was an intention to benefit. It is difficult to view the re-design, including the change in colour of the bottle, as accidental or coincidental.”

It was the view of the court that Lidl had been ‘riding on the coat-tails’ of the Hendrick's Gin mark and so grated the injunction sought. In concluding his judgment, Lord Clark reiterated that the order did not extend beyond Scotland and that the Defendant's product could still be sold but only in a form which differs from its current design. Therefore, Hampstead Gin can still be purchased across the United Kingdom, however, in Scotland we are likely to see a departure from Lidl’s mimicked redesign.

The decision demonstrates how proprietors of registered trademarks can rely on unfair advantage claims to combat against copycat products, even in circumstances where there is no actual or likelihood of confusion. 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.

References:

  • William Grant & Sons Irish Brands Limited v Lidl Stiftung & Co KG And Ors. [2021] CSOH 55

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