Summary
Based on the evidence of consumers, surveys and internal Tesco warnings, the High Court was entitled to conclude that the Tesco Signs did convey a price matching message by Tesco. Whilst the claim was at the “outer boundaries” of trade mark protection and passing off, it was nonetheless upheld. However, the Court of Appeal did overturn the finding that Tesco had infringed Lidl’s copyright based on the low level of copyright protection afforded to a simple logo, albeit this was inconsequential to the overall result.
The outcome of the appeal is a testament to the difficulty in overturning first instance decisions based on findings of fact. Whilst the Court of Appeal said that the judge’s findings might on first sight be “somewhat surprising” and perhaps not the conclusion they would have reached, an appeal is not a re-trial. The trial Judge was required to carefully to evaluate the evidence before her and decide what assistance, if any, she derived from it and the Court of Appeal was satisfied that is what she did.
Although this case is evidence specific, it highlights the risks of pushing the boundaries of trade mark law and adopting similar branding to a competitor. Despite the contention by Tesco that the use of yellow and / or basic geometric shapes was entirely commonplace in the supermarket sector and that it had due cause to use the colour blue as it was part of its corporate livery, this was not sufficient to establish “due cause” to use such a sign.
Background
The original claim was brought by Lidl against Tesco for trade mark and copyright infringement and passing off in relation to Tesco’s use of a yellow circle centred on a blue square to identify goods, discounted for members of Tesco’s Clubcard Scheme (the “Tesco Signs”). Lidl relied on its registered trade mark rights in two versions of its logo referred to as the “Mark with Text” and the “Wordless Mark”. Tesco counterclaimed that Lidl’s trade marks should be declared invalid due to the lack of distinctive character, were registered in bad faith or alternatively should be revoked for non-use.
The High Court decision
We reported on the High Court’s decision here. In summary, the High Court found in favour of Lidl, in that Tesco had infringed both of Lidl’s trade marks, was found liable for passing off (misrepresenting that that its prices were as low as Lidl’s) and infringed Lidl’s copyright in the Mark with Text.
Tesco’s counterclaim, although not sufficient to spare it from liability, was partly successful. The High Court found that Lidl’s original registration for the Wordless Mark (in 1995) was registered in bad faith as Lidl was unable to provide evidence of its genuine intention to use the mark, beyond achieving wider protection. It was therefore declared invalid. The same presumption of bad faith arose for Lidl’s later marks. However, Lidl was able to save its much later 2021 Wordless Mark.
Commentary on the Court of Appeal decision
Trade mark infringement and passing off
The claims advanced by Lidl were at the “outer boundaries” of trade mark protection and passing off. Absent the finding of a price matching message by Tesco to Lidl, the findings of fact at first instance may well have been very different. However, the Court of Appeal was satisfied that the trial Judge had evaluated the evidence before her and broadly given it appropriate weight, making the decision very difficult to appeal.
This case contains an excellent overview of the rules of evidence and is a good example of the persuasiveness and power of presenting case-specific evidence (especially in relation to consumer confusion) to guide judges in their overall ‘jury’ assessment.
Trade mark invalidity on the ground of bad faith (ever-greening)
The multiplicity of grounds relied upon by Lidl suggests that it was unable to identify any serious flaw in the trial Judge’s reasoning. Where there is a prima facie case of bad faith, the evidential burden then shifts to the trade mark holder to explain its intentions at the time of making the application. The trial Judge was entitled to attach no weight to Lidl’s submitted evidence, which did not answer the question as to its intentions to use the mark at the time of making the trade mark application.
Bad faith challenges are of increasing practical significance to brand owners. Where repeat filings need to be made with good reason, brand owners should consider keeping a record of the rationale at the time of filing to be adduced as evidence as required to rebut any allegations of bad faith.
Copyright
Although the degree of creativity in the Lidl logo may have been low, the trial Judge was entitled to find that copyright subsisted in it. However, given the simplicity of the logo, Lidl’s scope of copyright protection was also low. The Court of Appeal disagreed with the High Court and concluded that Tesco had not infringed the copyright in Lidl’s logo and Tesco’s appeal on this point was therefore successful, albeit it made no material difference to the overall finding.
When asserting copyright infringement in simple logos, brand owners should be mindful that the degree of protection will also be correspondingly lower. However, overall, the Court of Appeal’s correction will be welcomed.
For more information or if you have any questions, please contact Emily Roberts or Holly Webb.
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