Tesco loses appeal in branding battle with Lidl

Avid readers of the Seasonal Berry Smith Commercial Newsletter may recall the ongoing dispute between supermarket giants Tesco and Lidl which we last covered in 2023. You can read about it HERE

Previously, High Court Judge Joanna Smith concluded that Tesco’s use of the same yellow and blue colour scheme for their Clubcard Prices signage infringed Lidl’s trade mark rights as they were detrimental to the distinctive character of the Lidl logo. Furthermore, Tesco was found to be taking unfair advantage of their discount rival’s reputation with the use of these logos, as they were likely to be deceiving a substantial number of customers into assuming that their prices were comparable.

In particular, the Judge noted that the fact that so many members of the public had sent unprompted messages to both Tesco and Lidl questioning a perceived link between the two logos weighed strongly in Lidl’s favour, as this evidenced Lidl’s claim that Tesco were duping customers into thinking there were similar prices between them. The Judge further accepted Lidl’s assertion that this infringement equated to dilution of their brand, a claim which was unchallenged by Tesco.

Tesco sought to overturn that ruling, but the Court of Appeal on Tuesday dismissed its appeal that it infringed Lidl’s trademark. The decision likely signals the end of the legal battle between the rival retailers, which dated back to 2020. Tuesday’s ruling comes amid continuing fierce competition between retailers over their share of Britain’s 230 billion pound grocery market, driven by Lidl and fellow German-owned discounter Aldi.

In summary of the latest decision, ultimately the High Court found in favour Lidl, stating that Tesco were liable for passing off by misrepresenting that its prices were as low as Lidl’s. Tesco were also found liable for infringing both of Lidl’s trade marks and infringing their copyright in the Mark with Text. 

However, the counterclaim submitted by Tesco was partly successful as the High Court did find that Lidl’s original registered for the Wordless mark back in the 1990s was registered in bad faith as Lidl could not provide evidence of its genuine intention to use the mark. In turn, that particular mark was found to be invalid. You can read more regarding the registering of trade marks in bad faith HERE

Nevertheless, this case is likely to have a strong impact on future IP law, with the potential for further similar claims based on a similar suggested equivalence, rather than direct confusion. The decision may ultimately assist Lidl’s competitors in the complaints of “look alike” products featuring on supermarket shelves. Berry Smith’s commercial team can provide comprehensive advice on UK trade marks and IP protection and exploitation, helping you safeguard your intellectual property while maximising its potential.

Please contact us if you would like more information about the issues raised in this article or any other aspect of Commercial law at 029 2034 5511 or commercial@berrysmith.com