Tesco Shown A Yellow (Club) Card

• Author: Mr Daniel Wheatley and Joseph Letang
• Law Firm: Dehns
• Published date: 12 May 2023

Lidl Great Britain Ltd & Anor v Tesco Stores Ltd & Anor [2023] EWHC 873 (Ch)

On 19 April 2023, the High Court of England and Wales handed down its long-awaited judgment in the battle between supermarket giants Lidl and Tesco. The case concerned the use of Tesco's 'Clubcard Prices' sign, which was held to infringe Lidl's registered trade mark rights and copyright in its 'LIDL Logo'. Tesco's use also amounted to passing off. Here, we 'unpack' some of the key issues...

Trade Mark Infringement of the 'LIDL Logo'

This was not a case where the alleged infringement was based on there being a likelihood of confusion between Lidl's registered trade marks and the 'Clubcard Prices' sign. Instead, Lidl's case was that Tesco's use of its sign would take unfair advantage of the reputation of the LIDL Logo ("free-riding") and would be detrimental to its distinctive character ("dilution"). Success here requires that the earlier mark has a reputation and is sufficiently similar to the sign that is claimed to infringe. It is then necessary to find that the average consumer would form a 'link' between the earlier mark and the sign, and that use of the sign is without 'due cause'.

The LIDL Logo satisfied the reputation requirement. Turning to the question of 'similarity', Tesco tried to advance an argument that any resemblance between the LIDL Logo and the 'Clubcard Prices' sign existed in...