The Importance Of The Use Of Colour In A Trademark

• Law Firm: Goldman Sloan Nash & Haber LLP
• Subject Matter: Intellectual Property, Trademark
• Author: Mr John McKeown
• Published date: 19 May 2023

A decision of the English High Court of Justice raises some interesting trademark and branding issues. Lidl Great Britain Ltd v Tesco Stores Ltd [2023] EWHC 873 (Ch)

The Facts The dispute was between two well-known supermarket chains. Lidl Great Britain Limited ("Lidl") is a mid-tier supermarket chain and discounter. Its business is set up, so it won't be beaten on price. Lidl has worked hard to reframe its perception as a mere discounter and instead to communicate a business model which enables it to offer value: quality products at affordable prices, a concept conveyed by the slogan "Big on Quality, Lidl on price". Lidl has succeeded with this approach and rapidly increased its market share and the number of stores it operates.

Lidl relied on its trademark rights in relation to two versions of the Lidl logo: a logo which includes the word "Lidl" ("the Mark with Text") and a logo without that word ("the Wordless Mark"). Lidl owns U.K. registrations for both of these marks which include colour claims. The Lidl Marks are reproduced below with an example:

Tesco Stores Limited is the biggest supermarket operator in the UK. Tesco Clubcard launched in 1995 and was created as a loyalty program to reward customers for shopping at Tesco. The Program has been successful and is well known. The Clubcard Prices promotion, about which Lidl complains, is a discrete advertising strategy which launched in September 2020. It promoted the Tesco Clubcard in a new way, by providing discounts to clubcard holders at the point of sale on selected goods. Under the Clubcard Prices initiative, Tesco uses its trademark, which uses the same colours as the Lidl logo in various ways, always with text overlaid and always as a signifier of its Clubcard Prices promotion. The Tesco mark and samples of use are shown below.

Lidl asserted that Tesco was infringing its registered trademark rights, passing off and infringing copyright. Lidl's complaint derives from the presence of the common element, in all the uses made by Tesco. Lidl points out that, in common with the Lidl Logo, the Tesco mark has a blue square containing a centred yellow circle extending towards the edge of that blue square. In the case of the Mark with Text, Lidl points to a further similarity, namely the presence of wording across the middle of the yellow circle. Although the words differ, the uses made by Tesco of the background elements are of a kind where attention to the detail of the wording is often absent or...