by Jeremy Erwin , Ross Magee April-26-2024 in Commercial & Business, Intellectual Property

In our 2023 World IP Day publication, we examined the judgment of Mrs Justice Joanna Smith in the High Court of England and Wales delivered on 19 April 2023 involving well known supermarket chains Lidl and Tesco. In that judgment, the High Court agreed with Lidl’s argument that the yellow circle, used by Tesco for its Clubcard Prices logo, led to the perception of price matching between the two undertakings with the Court ultimately finding in favour of Lidl. As noted in our last article, Tesco had sought leave to appeal the decision.

The appeal was heard by the Court of Appeal (Lewison LJ. Arnold LJ. Birss LJ.) commencing on 19 February 2024 with judgment being handed down on 19 March 2024. This included a full appeal by Tesco of the High Court Decision together with an appeal by Lidl of a finding by the High Court that the wordless depiction of the wordless yellow circle had been filed as a trade mark in bad faith.

Prior to the appeal, the High Court delivered a supplemental judgment granting an injunction in favour of Lidl restraining Tesco from copyright infringement even if Lidl were to ultimately fail in its trade mark and passing-off claims.

In its judgment, the Court of Appeal upheld all but one aspect of the High Court’s decision and dismissed Tesco’s appeal. The Court also upheld the High Court’s decision that the wordless mark had been filed in bad faith. Ultimately the Court determined that the High Court was correct in the legal tests applied and the question on appeal ultimately came down to the evidence.

Interestingly at paragraph 200, Lord Justice Lewison notes that he “found the trade mark claim and passing off claim very difficult, at the outer boundaries of trade mark protection and passing off.”

In the final paragraph of the judgment, Lord Justice Lewison noted that “I find myself in the position of Lord Bridge of Harwich in the Jif Lemon case at 495If I could find a way of avoiding this result, I would. But the difficulty is that the trial judge’s finding of fact, however surprising they may seem, are not open to challenge. Given those findings, I am constrained … to accept the judge’s conclusion cannot be faulted in law. Within undisguised reluctance I agree … that the appeal should be dismissed.”

With Lidl’s success, you may notice a change to Tesco’s branding in stores. The decision is another interesting development for brand owners and practitioners containing a helpful outline of the relevant legal principles and some interesting commentary from the panel. It is sure to be cited in many future intellectual property judgments. 


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