The Battle of the Supermarkets – Evergreening of Commerce Marks and Potential Dangerous Religion

Two well-known grocery shops, Tesco and Lidl, are concerned in an ongoing commerce mark dispute (Lidl Nice Britain Restricted v Tesco Shops Restricted [2022] EWHC 1434 (Ch)). Whereas the trial is ready to happen in 2023, the latest developments in relation to arguments of dangerous religion are noteworthy, particularly for manufacturers engaged in commerce mark refiling, or ‘evergreening’.

The Dispute
Lidl is a funds grocery store that owns various commerce mark registrations for its brand, together with a figurative mark bearing ‘LIDL’ within the center, and a plain brand mark with no textual content (see beneath).

The most important grocery retailer chain within the UK, Tesco, has launched a brand resembling that of Lidl’s plain brand for the promotion and advertising of its loyalty low cost playing cards, or ‘Clubcards’, in September 2020. The advertising supplies used entail a yellow circle in a blue rectangular font with ‘Clubcard Costs’ spelled out in black within the center (see beneath).

Lidl claimed that such Tesco’s promotional supplies infringed on their registered commerce marks, and specifically, the plain brand mark. Though the wordless mark might not have been utilized by Lidl by itself within the UK, Lidl acknowledged that it’s acknowledged as being distinctive of the funds grocery store’s enterprise, and has established a fame within the UK. As such, Tesco’s Clubcard Costs advertising techniques was to ‘trip on the coattails of Lidl’s fame as a “discounter”’, taking unfair benefit of Lidl’s commerce mark. As well as, Lidl put ahead claims of dilution, copyright infringement in relation to the artworks of the commerce marks, and passing off.

Dangerous Religion
In its counterclaim, Tesco responded with an argument of dangerous religion, specifically that Lidl filed the plain brand mark as a authorized weapon with no intention to make use of it however moderately to determine a wider safety for the phrase brand. Most notably, Tesco identified to a Lidl’s follow of periodically refiling the wordless mark, which permits circumventing the requirement of demonstrating use of the mark after 5 years of utility. Certainly, the plain brand mark was initially filed in 1995, with subsequent purposes for a similar mark made by Lidl in 2002, 2005, 2007 and 2021. The dangerous religion argument made by Tesco was struck out at first occasion, however following the latest Courtroom of Enchantment choice, it can now type a part of the counterclaim within the upcoming Excessive Courtroom battle between the supermarkets subsequent yr.

The follow of evergreening commerce marks has been a matter of debate for various years. Particularly, the latest EU choices with respect to dangerous religion filings made by Hasbro for the MONOPOLY mark have emboldened many to hunt to problem commerce mark registrations within the UK and the EU alongside related grounds.

Accordingly, if this matter proceeds, it can doubtless present essential steering on the validity of the follow of evergreening commerce marks within the UK – notably in a publish Brexit world the place the UK might diverge in strategy from the EU.

By Aurelija Grubytė and Simon Casinader

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