August EWJ 24 - Flipbook - Page 45
Lidl v Tesco: Every Lidl
Piece of Evidence Helps
In Lidl Great Britain Ltd v Tesco Stores Ltd, the Court of Appeal considered whether Tesco’s
Clubcard logo amounted to trademark infringement, passing off, and copyright infringement
of Lidl’s logo, while reviewing the value of different evidence types in assessing the likelihood of
consumer confusion.
In 2023, the High Court determined that Tesco’s use
of its Clubcard logo amounted to trademark infringement, passing off, and copyright infringement of
Lidl’s logo. The High Court also said, however, that
Lidl had registered certain trademarks in bad faith.
Both Tesco and Lidl appealed the decision.
average consumer of the relevant goods or services
and then decides the issue.
In March 2024, the Court of Appeal granted Tesco’s
appeal in part, specifically against the finding of copyright infringement of Lidl’s logo. However, it upheld
the lower court’s findings that enough consumers
might be misled by Tesco’s signs so as to constitute
trademark infringement and passing off by Tesco.
The Court of Appeal dismissed Lidl’s appeal against
the finding of bad faith registrations.
The Court of Appeal indicated that when deciding
whether there is likelihood of confusion, evidence of
consumer shopping habits is helpful:
However, the Court of Appeal confirmed that the fact
that evidence is often unnecessary does not mean that
any evidence that is available is of no value.
“When deciding issues such as likelihood of confusion,
it can be of value for the court to receive evidence as
to the shopping habits of consumers of the relevant
goods or services: for example, as to whether they are
in the habit of reading the label on an item before selecting it for purchase or whether they simply rely
upon the appearance of the packaging. This is not in
itself evidence of confusion, but it may be evidence of
circumstances giving rise to a likelihood of confusion… In some circumstances, evidence of this nature
can properly be given by means of factual evidence
from a witness with experience in the relevant trade.”
Evidence in trademark and passing off cases
As the Court of Appeal recognised: “It is well known
that two types of evidence often cause difficulty in
trademark and passing off cases, namely survey
evidence and expert evidence.”
Surveys
It is very difficult to design a survey that complies with
the court guidelines and that is directed to the likelihood of confusion. There is an inherent problem in
trying to test people's unconscious assumptions
through questioning, which is partly impacted by the
difficulty of replicating the real-world situation faced
by consumers in a survey.
Evidence of actual confusion
Often a business will have evidence of actual confusion – for example, mail delivered to the wrong address, online reviews confusing the two businesses, or
enquiries from (potential) customers that are directed
to the other business. The Court of Appeal recognised
that such evidence is likely to be of more value if the
relevant witnesses are able to give evidence, as
occurred in this case.
As such, businesses should be wary about instructing
surveys and the conclusions that they reach.
It also said, however, that if that is not the case,
because the individuals are unavailable or unwilling
to give evidence, the court can still consider the
evidence and “make what it can of the documentary
evidence”. Such evidence is relevant because it may
allow the court to gauge the perception of real
consumers.
Expert evidence
With regards to expert evidence, the difficulty lies in
finding experts who have relevant expertise – i.e., an
expert on likelihood of confusion.
The courts have repeatedly said that an experienced
judge will almost certainly have more expertise on
that question than any so-called expert. But the Court
of Appeal was careful to distinguish these so-called experts from market research experts who can be called
to give evidence on the reliability and interpretation of
any surveys.
Comment
The Court of Appeal’s confirmation that evidence of
the confusion of real consumers is relevant and helpful to the court in assessing the likelihood of confusion
is useful for businesses to be aware of when seeking to
enforce their own intellectual property rights. While
such evidence will not be determinative, businesses
should collect any such evidence if an issue arises.
Other types of evidence
Trademark and passing off disputes can be decided
either without any evidence at all or with no evidence
other than evidence as to the use, distinctive character,
and reputation of the trademark in issue. To reach a
decision, the court puts itself in the position of the
EXPERT WITNESS JOURNAL
It is also helpful to know that, for trademark and
passing off cases, the court will be receptive to hearing
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AUGUST 2024
