Case Update: Lidl v Tesco

As evidence that even the UK’s retail giants can get their marketing decisions badly wrong, the High Court has recently found in favour of Lidl in its trade mark, copyright and passing off dispute against Tesco.

Tesco used an identifier for its Clubcard Prices promotion comprising a blue square background and a yellow circle which was not dissimilar to the well-known Lidl logo.

The Court held that Tesco’s use of the mark gave rise to potential confusion on the part of the public over the origin of the mark. Evidence gathered by Lidl demonstrated that customers identified a perceived link between the Clubcard signs and the Lidl mark (and indeed Tesco’s own survey to determine whether to use the Clubcard signs showed that although respondents had been primed to think “Tesco”, several still answered “Lidl”).

For similar reasons the passing off claim was also successful and the similarity of the two marks was sufficient to demonstrate that Lidl’s copyright had been breached.

Despite the national publicity, none of the legal findings were particularly surprising. One interesting aspect was that as well as its main trade mark, Lidl had also registered a “wordless” mark using the same well-known blue square and yellow circle. Tesco successfully argued that this had been registered in bad faith (in an attempt to secure a wider legal monopoly than it was entitled to, with no genuine intention to use it) and should therefore be declared invalid. However, this had no impact on the overall case since Lidl still won on the basis of its other trade mark.

If you want any help with registering a UK trade mark, please contact Matt Worsnop on 0116 281 6235 or by email on Matt.Worsnop@bhwsolicitors.com.