manuelesteban
27 May 2021TrademarksAlex Baldwin

Lidl to drop ‘lookalike’ Hendrick’s gin after TM loss

Lidl has been forced to pull its Hampstead London Dry Gin from shelves after losing a legal dispute with gin maker Hendrick’s at Scotland’s Court of Session.

The court noted that Lidl’s Hampstead gin featured an ‘apothecary-style bottle’, similar colouring and similar diamond label to the Hendricks bottle.

Lord Clark found Lidl guilty of infringement under Section 10(3) of the Trade Marks Act of 1994—which concerns ‘taking unfair advantage’ of established brands and trademarks.

He also granted an interim indericit to Hendricks owner William Grant & Sons Irish Brands, which temporarily prevents Lidl from selling its gin in Scotland.

“When viewed in the context of the dark colour of the bottle consistently used, the pursuer’s trademark has a distinctive character.” the filing said.

Laurie Bray, senior associate and trademark attorney at Withers & Rogers, told WIPR: “Hendrick’s was concerned that consumers would confuse the two products, because the design of the bottles was too similar.

“The company provided evidence to the court in the form of social media messages to show that some consumers thought there might be an association between the two products.”

Similar features

The Hampstead gin bottle was redesigned in December 2020 to an appearance that more closely resembled the Hendricks bottle.

In his comparisons between the Hendricks and redesigned Hampstead bottle, Lord Clark noted the similar “dark coloured bottle with a diamond label” and “an image of juniper” that were not present in the original Hampstead bottle.

William Grant & Sons Irish Brands said in the filing: “The constellation of changes left one with no doubt that the defenders’ original product was changed to the infringing product to more closely replicate the get-up of Hendrick’s gin.

“The only credible explanation for these design changes was that the defenders intended to trade off the pursuer’s reputation and goodwill.”

However, the court ruled that in the five months the gin had been on sale with its redesign, there was “no evidence of actual confusion” between the two bottles.

Section 10(3)

Whilst Lord Clark noted little possibility of prima face confusion, he noted that there was “at least some risk” of harm to the Hendrick’s brand.

“I take that factor into account and 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,” Clark said.

According to the judgment, there was a “reasonable prospect of success” for William Grant & Sons Irish Brands showing that Lidl intended to benefit from the reputation and goodwill of the Hendricks mark.

For these reasons, Clark ruled that there was a prima face case for infringement under Section 10(3).

‘Case of the Caterpillars’

This decision follows Aldi pulling its ‘Cuthbert’ the caterpillar from store shelves last month following a dispute with M&S, which claimed the cake infringed on its established Colin the Caterpillar product.

“It’s another case of the caterpillars,” Bray added, “it is clear that there is a pattern emerging”.

She warned: “Low-cost retailers that are intent on producing own brand copies of premium-branded products should expect to face legal challenges in the future.”

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