Month: May 2023

This is the last of our series of blogs about supermarket branding battles, from Two IP trade mark attorney Rachel Havard.

Last time, we talked about copycat products and brand lookalikes – see our last blog here, which had particular focus upon discounter Lidl. Let’s now look at a classic case of “do as I say, not as I do!”

Few could have missed that Lidl have been prominent in the news lately, acting as gamekeeper rather than poacher. We refer, of course, to Lidl’s success before the UK High Court, against supermarket Tesco. This concerned Tesco’s selection and use of imagery of “a graphical device formed of a blue square background and a yellow circle”, for its Clubcard loyalty scheme, with examples shown below:

These images and others below are taken from the Judgment, which you will find here – and some great bedtime reading, if you like, at a mere 102 pages.

The essentials

Lidl registered, and use in the UK, The Mark with Text below:

Tesco were found to infringe Lidl’s registered trade mark rights by taking unfair advantage of and causing detriment to the reputation of the Lidl mark. Interestingly, this was the infringement case run, rather than allegations of a likelihood of confusion as to origin of the respective goods. Passing off and copyright infringement by Tesco were also found to have occurred.

Lidl also had trade mark registrations of the logo without the word “LiDL”, as below:

even though their use was always with the word “LiDL”. Trade mark applications which had led to registrations of The Wordless Mark were deemed to have been filed in bad faith; Lidl could not provide reasoning for seeking registration in that form at the date of application; also, repeated filing by Lidl of applications for this same mark were an attempt to “evergreen”, i.e. to circumvent the requirement to have used a trade mark in its registered form, or differing only in elements which do not alter the distinctive character of the mark in the form in which it was registered, if registration is not to be successfully attacked on non-use grounds. All bar one of Lidl’s registrations for The Wordless Mark were therefore deemed invalid.

Deep dive

From a consumer perspective, this case and its outcome grabs attention, because the players and branding elements concerned are so recognisable; but a judgment running to 102 pages seems a lot to reach the conclusions discussed above.

For brand owners and their advisors, however, the judgment is a treasure chest of dos and don’ts for the process of selecting, designing, developing and registering trade marks, but also for futureproofing in anticipation of challenges further down the road. It highlights the importance, early on, of recognising red flags and seeking appropriate advice.

The creative process behind Tesco selecting the yellow circle presentation – a clear change of direction from previous promotions of its Clubcard scheme – was subjected to close scrutiny at trial. Early concerns expressed in emails within the Tesco creative team were exposed. Much criticised was a lack of clarity on the extent of involvement of external branding agencies in the creative process. Ordinary people, who had been doing their every day jobs, found themselves on the stand accounting for the part they had played.

Intentions of Lidl, too, at the date of filing their trade mark applications for The Wordless Mark even as long ago as 1995, were open to question and an inability to explain those historical intentions led to important trade mark registrations being deemed invalid.

No simple, side by side comparison here – of two trade marks for the same goods and whether they might be confused. This judgment shows that brand owners may need to be prepared for a deep dive into their entire process of brand creation.

Afterword

What cannot be ignored in all of this, is something of a double standard on the part of Lidl, as they regularly adopt the same colour elements and presentations for their products as those directly competitive with them, but argue to distinguish these by use of different word elements with such get up. The High Court disregarded mention by Tesco of Lidl’s own behaviours, as not being relevant to the case before them; but it will certainly be interesting when reasoning from this case is utilised by those in the same market place, whose products and branding are regularly imitated closely by Lidl.

With Tesco all set to appeal, and their version of the yellow circle/blue background imagery still being used extensively, there is definitely more to come!

For advice and assistance at all stages of the brand creation process, our experienced trade mark attorneys are here to help. Get in touch here or email hello@two-ip.com

This is the second of our series of blogs about supermarket branding battles from Two IP trade mark attorney, Rachel Havard.

Last time, we talked about the evolution of the consumer, and fierce competition amongst supermarkets and discounters – see our last blog here.  Copycat products and brand lookalikes now play a huge part in this.

The problem

Discounters such as Aldi and Lidl are no strangers to imitation of the leading brands, using very similar aspects of product appearance, packaging, and colour, but generally avoiding use of word elements which might be seen as too close to the leading brand name.  That said, they often choose brand names sharing first letters or letter combinations in common with the imitated brand, as well as other similarities of product get-up.  Even if there is not confusion as to the commercial origin of the respective goods, there is a deliberate imitation by one of another, to piggy back off the reputation of the leading brand and prompt customers to buy the cheaper, lookalike product instead. 

Below for comparison are a few examples of brand imitations by Lidl, placed beside the well-known or leading brand:

IP protection considerations

The traditional approach of Intellectual Property Offices and the courts has been to attach more significance to word elements of branding than to stylisation, logo elements or other product get-up. Likewise, there has been the tendency for brand owners to register the block capitals version of their word trade marks, quite rightly to embrace any reasonable graphic representation of that word. There is also the issue that, once a trade mark has been on the register for 5 years or more in the UK, non-use for a 5-year period of that mark as registered could result in revocation of the registration if challenged by a third party.

As stylisation and logo elements will come and go for a brand, just as design trends come and go, registration of a brand name in block capitals would seem best for futureproofing. Ideally, though, the brand owner should consider available IP protection for all or any elements of their branding which they see as capable of attracting custom; this could include word elements, stylisation of words, logo elements used and/or the overall get-up of packaging, including particular colour schemes.

If elements of branding or product get-up have accrued goodwill, such that a misrepresentation by another could damage that goodwill, then there could be the option to bring a passing off action, as a common law right even without registration. However, passing off actions would require the compilation of persuasive evidence of goodwill, and proof of other essential elements of the tort when, in contrast, a trade mark registration could very clearly define exclusive rights enjoyed in a trade mark, who owns them and for what goods. Similarly, design protection could be utilised to defend other key elements of branding, in the same way as relied upon by Marks & Spencer in their successful challenge of a “light up gin bottle” the subject of an Aldi imitation of Marks & Spencer’s own product.

Join us next time for our final blog in this series – “Do as I say, not as I do!”

If you have brands you need to protect, or want to bolster the protection you do have, our experienced trade mark attorneys are here to help. Get in touch here or email hello@two-ip.com

This is the first of a series of blogs about supermarket branding battles from Two IP trade mark attorney, Rachel Havard.

We, as consumers, want our weekly shop to still include quality products, but at an affordable price. We need those pennies in our wallets to stretch that little bit further.

Major players in the supermarket sector are jockeying for position, pursuing that all important competitive edge, so that we spend with them rather than elsewhere.

Whatever a business’ fame or fortune these days, continued survival is not a given – we have only to look at our local high street to see it – and those still in the game are trying everything they can, including imitation, mimicry and probing the boundaries of others’ intellectual property rights for limitations.

Historically, supermarkets have placed their own brand equivalent products next to the leading brands on the shelves. It might have been the case many years ago that customers believed the leading brand to manufacture the supermarket’s own version. So much so that Kelloggs once ran a marketing campaign stressing that they “don’t make cereals anyone else”.

Supermarkets are now finding their biggest competitors to be so-called discounters, such as Aldi and Lidl, both of whom imitate the appearance of leading brands as closely as they can.

Today’s savvy consumer knows exactly what they want and where to get it. If they feel they cannot justify paying for the leading brand, they will look for what they believe will be the next best thing, and the degree of similarity in brand elements of respective products will play a big part in the choices they make.

Join us next time for our blog about “Copycat products and brand lookalikes”.

If you have brands you need to protect, or want to bolster the protection you do have, our experienced trade mark attorneys are here to help. Get in touch here or email hello@two-ip.com