Every Lidl Helps ' Lidl Wins High Court Case Against Tesco On The "Clubcard Prices" Logo

• Published date: 03 May 2023
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Copyright, Trademark, Trials & Appeals & Compensation
• Law Firm: HGF Ltd
• Author: Apostolos Dakanalis

After an interim High Court decision and a Court of Appeals decision, Mrs Justice J. Smith handed down her judgement on 19 April in favour of Lidl having held that Tesco:

1. infringed the LIDL logo;
2. passed off its goods as being priced matched to Lidl;
3. infringed Lidl's copyright by copying the blue background with the yellow circle which forms a substantial part of the LIDL logo.

Tesco succeeded in its counterclaim that Lidl's 1995, 2002, 2005 and 2007 registrations for its Wordless Mark were filed in bad faith. However this will be little consolation to Tesco which is faced with the prospect of having to cease use of its Clubcard Prices logo.

Justice Smith's judgment runs at 102 pages and chances are that we will be poring over it for months to come – or at least until Tesco appeals!

A. Trademark infringement

• the LIDL logo and the Clubcard Prices logo are visually similar, with Tesco's internal team evidently fearing the same;
• the public linked the marks based on evidence of both origin and price match confusion/association by the public and evidence that Tesco recognised internally the potential for confusion;
• Tesco's use of the Clubcard Prices logo was detrimental to the distinctiveness of Lidl's word logo;
• Tesco gained an unfair advantage by associating its prices with Lidl and its reputation for low price value.

Tesco's argument that the similarities between the marks boil down to elements which "are individually trite, conceptually commonplace and are in any event drowned out by the text" was not deemed persuasive and Justice Smith had a leg to stand on considering the evidence from Tesco's internal team (and evidence on origin and price match confusion/association by the public) that the marks looked similar.

Tesco's defence Re: unfair competition – aptly coined by our own Lee Curtis as the 'whataboutery' defence – effectively was that its actions did not constitute unfair competition considering what is going on in the supermarket sector and Lidl's 'lookalike practices'. The defence was rejected as not specifically pleaded and/or supported with evidence. However, it will be interesting to see if arguments that the threshold for fair competition varies across sectors develop further.

A brief word on Lidl's Wordless mark. Justice Smith says in her judgement when considering Tesco's counterclaim (see below) that "the Wordless Mark is itself perceived by consumers as a trade mark and that Lidl has established genuine use of the Wordless Mark through...