13 September 2017Trademarks

Kroger and Lidl end trademark clash

Supermarkets Kroger and Lidl have agreed to dismiss a trademark infringement claim centring on a food range launched by Lidl.

In July, WIPR reported that just after opening its first store in the US, budget retailer Lidl was hit with a lawsuit over its ‘Preferred Selection’ range.

The suit was filed by Kroger at the US District Court for the Eastern District of Virginia, Richmond Division.

Kroger, which has over 2,000 retail stores in the US, claimed that Lidl had created its range to “capitalise on and benefit from the goodwill” of Kroger’s ‘Private Selection’ range.

In September 2016, Lidl had applied to register the ‘Preferred Selection’ mark (US application number 87,175,637) to be used in connection with meats, alcohol, coffee, and fruit and vegetables.

Kroger owns six trademarks and service marks for its ‘Private Selection’ range, including US registration numbers 2,685,492 and 2,740,565 for goods in classes 29, 30, 31, 32 and 35, dating back to 2003.

According to Kroger, correspondence between Lidl and Kroger’s in-house and outside counsel saw Lidl reject objections to the name raised by Kroger, which later went on to oppose a Lidl trademark registration in March 2017.

Lidl hit out over the accusations made by its rival, denying that its use of ‘Preferred Selection’ would cause confusion or dilution.

“If Kroger were truly concerned about its brand, it would not have purposefully delayed for six months after knowing that Lidl was developing and planning to launch a store brand called ‘Preferred Selection’,” claimed Lidl.

The budget retailer also alleged that Kroger has used the suit to disrupt the launch of a new, emerging competitor.

But now the dispute has come to an end—yesterday, September 13, US District Judge John Gibney signed the voluntary dismissal submitted by the parties on Thursday, September 7.

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More on this story

19 July 2017   Budget retailer Lidl has hit out over accusations by rival Kroger that it has attempted to “capitalise on and benefit from the goodwill” of a food range.
18 September 2018   Budget retailer Lidl received mixed news at the European Union Intellectual Property Office last week after it backed the company’s attempt to revoke a trademark, but only partly dismissed an opposition to Lidl’s own mark.
12 April 2022   Grubhub’s new logo is too similar to a trademark for US supermarket chain Kroger’s “Home Chef” brand and should not be used, a Chicago judge has suggested.