Member Article

A lot has been written about the Scottish case where William Grant sued the budget supermarket chain Lidl for trade mark infringement.

The issue

Lidl is selling a gin that one imagines was intended to look rather a lot like the well-established Hendricks gin. This Lidl gin is called Hampstead, although the similarity between the two products relates as much to get-up as to the (surely not coincidental) choice by Lidl of a nine-letter name that starts with the letter H. It’s worth mentioning that the Lidl gin has been around for some time, but it was a recent re-design that prompted William Grant to act.

Image source

The similarities

Amongst the alleged similarities:

• the “apothecary-style bottle”;
• the diamond-shape label and the lettering;
• the dark colour of the bottle (this was as a result of a re-design by Lidl);and
• the presence of cucumber images on the Lidl re-design which, it was argued, alluded to the fact that Hendricks is infused with cucumbers.

Evidence by emoji

William Grant produced evidence of confusion. This took the form of social media messages that showed that some consumers thought that there was an association between the products. Here’s one such message:

“Hmmmmm… reminds me of another gin, but I just can’t put my finger on it…”

 Followed by laughing emojis.

Another one said the same thing, but was followed by winking emojis.

The finding

To the surprise of many in the UK IP world, the Scottish Court of Session granted an interim interdict (injunction). The court relied on what might generally be described as infringement by dilution or tarnishment, which is dealt with in section 10(3) of the UK trade mark legislation. This talks of the “use of a sign (which) without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.” The South African legislation, of course, has a very similar provision.

Some detail

In granting the order the judge, Lord Clark, spoke of a “transfer of image”, which occurred because the Hendricks device mark was called to mind. There was an unfair advantage because of a possible change of economic behaviour on the part of Lidl’s customers, with Lidl clearly intending to benefit from the reputation and goodwill of William Grant’s mark, without having to bear the cost and hassle of advertising. The judge made the point that “bottle shape and colour are often intended as distinguishing features of gin products.”

Lord Clark, in his own words

“I accept that the pursuer in the present case has not (as yet) provided a sufficient basis to show a reasonable prospect of success in establishing a change in the economic behaviour of the average consumer or a serious likelihood that such a change will occur in the future.

I do however recognise that there is at least some risk to the pursuer of harm to the brand…I take that factor into account and find that there is a reasonable prospect of success for the pursuer in showing that the defendants 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… I therefore conclude that there is a reasonable prospect of success on the part of the pursuer in showing a change in economic behaviour or a real likelihood of such a change by customers who buy from Lidl.”

Why the surprise at the finding?

Visitors to the UK are often amazed at how blatantly the supermarkets copy well-known brands. Yet, brand owners seldom seem to do anything about it. There seems to be an assumption that consumers won’t be deceived by supermarket look-a-likes because consumers are so accustomed to seeing supermarket look-a-likes. So, it is interesting to see the judge in this case referring to “an intention to benefit” as opposed to an intention to deceive.

If a similar case came up in South Africa, we think that the court would find for the brand owner.