Battle of the logos: Tesco takes on Lidl in UK Court of Appeal
Three-day hearing begins between major supermarkets to decide trademark, copyright and passing off claims | Hearing follows Tesco’s appeal against finding of infringement of Lidl’s logo | Court expected to address clarity over bad faith and evergreening.
A three-day hearing between two major UK supermarkets will kick off today, following the finding last year that one infringed the trademark and copyright of the other’s logo.
Budget supermarket chain Lidl won its dispute with the UK’s largest supermarket, Tesco, last April when a judge ruled that Tesco had infringed Lidl’s trademark and copyright; and had ‘passed off’ its goods as being as good in value as Lidl’s.
The clash focuses on the alleged similarity between each retailer’s distinctive blue-and-yellow logos.
Tesco’s sign is a yellow circle on a blue square with the words ‘Clubcard Prices’—a logo relating to its ‘Clubcard’ customer loyalty scheme, which offers point-of-sale discounts on selected items to members.
Lidl’s sign, meanwhile, features a blue square and yellow circle encompassing the word ‘Lidl’, framed by a thin red border.
However, the judge upheld Tesco's invalidity claims against Lidl’s trademarks featuring the same circle and square with no text, on the basis that they were applied for in bad faith.
In her final order, filed in May 2023, Justice Joanna Smith granted, inter alia, a final injunction against copyright infringement by Tesco, which Tesco appealed but lost.
The hearing, to take place at The Court of Appeal of England and Wales, is expected to last for three days from today, Monday, February 19 and will be live-streamed.
Tesco’s appeal will be heard before Lord Justice Lewison, Lord Justice Arnold, Lord Justice Birss.
In addition, it is anticipated that Lidl's cross-appeal of the revocation of its wordless marks on grounds of bad faith will also be heard.
Burden of proving bad faith switches to Lidl?
Anneka Dalton, partner at Taylor Wessing's Technology, IP and Information team, told WIPR that the hearing should provide clarity to trademark owners on the law of bad faith.
"This much-anticipated case, one hopes, will give trademark owners clarity on the law of bad faith, and more specifically on whom the burden of proving bad faith should rest and in what circumstances that burden may shift.
"The Court of Appeal may seek to clarify what some might see as a rather paradoxical decision of the High Court, in which Lidl was found to have in fact used its wordless marks (thereby defeating Tesco's invalidity claim for non-use), but had them revoked anyway based on a lack of intention to use them at the time of applying for them.”
Dalton added that, although Lidl succeeded on this issue before the High Court, the Court of Appeal may take the opportunity to offer further clarity on the circumstances in which use of only the word version of a wordless mark registration may amount to non-use of the latter.
"We expect the court to address the High Court's [potential] reversal of the burden of proving bad faith from the claimant (or in this case, the counterclaimant—Tesco) onto the defendant (Lidl), and clarify under what circumstances the burden can or should be reversed.”
She added: “This is likely to be one of the most impactful issues for brand owners facing bad faith claims or considering new trademark applications, and one of the most interesting arguments to watch out for during the hearing.
"The Court of Appeal may also provide further colour to the High Court's consideration of the 'evergreening' of Lidl's trademark registrations, and in particular the evidential requirement for proving as well as rebutting an evergreening claim.”
