The Battle of the Supermarkets – Evergreening of Commerce Marks and Potential Unhealthy 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 about to happen in 2023, the current 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 a variety of commerce mark registrations for its emblem, together with a figurative mark bearing ‘LIDL’ within the center, and a plain emblem mark with no textual content (see beneath).

The most important grocery retailer chain within the UK, Tesco, has launched a emblem resembling that of Lidl’s plain emblem for the promotion and advertising and marketing of its loyalty low cost playing cards, or ‘Clubcards’, in September 2020. The advertising and marketing 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 emblem mark. Though the wordless mark could 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 popularity within the UK. As such, Tesco’s Clubcard Costs advertising and marketing techniques was to ‘journey on the coattails of Lidl’s popularity 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.

Unhealthy Religion
In its counterclaim, Tesco responded with an argument of dangerous religion, particularly that Lidl filed the plain emblem mark as a authorized weapon with no intention to make use of it however relatively to ascertain a wider safety for the phrase emblem. 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 software. Certainly, the plain emblem mark was initially filed in 1995, with subsequent functions 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 current Court docket of Enchantment determination, it is going to now kind a part of the counterclaim within the upcoming Excessive Court docket battle between the supermarkets subsequent 12 months.

Takeaways
The follow of evergreening commerce marks has been a matter of debate for a variety of years. Particularly, the current 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 comparable grounds.

Accordingly, if this matter proceeds, it is going to doubtless present vital steerage on the validity of the follow of evergreening commerce marks within the UK – notably in a submit Brexit world the place the UK could diverge in method from the EU.

By Aurelija Grubytė and Simon Casinader