Come on Lidl, let’s have some oriGINality!
Key Contact: Cordelia Payne
Author: Ffion Morgan
Hot on the heels of the Aldi Caterpillar saga, Lidl, another discount supermarket, has been ordered to stop selling its own-brand gin because of its uncanny likeness to upmarket rival, Hendrick’s.
Hendrick’s gin, produced by William Grant and Sons Irish Brands Ltd is widely recognised by its trademarked diamond-shaped label. In December of last year, Lidl’s Hampstead gin underwent a Hendrick’s inspired glow-up. William Grant’s lawyers claimed that Lidl redesigned the Hampstead gin bottle to resemble that of Hendrick’s. Social media comments about the redesign of the Hampstead gin had a pivotal role to play in the court hearing, showing some support for the proposition of Lidl riding on the coattails of the Hendrick’s trademark. One comment said: ‘looks like a complete rip off of Hendricks!’ and another said ‘fake copy of Hendrick’s diminishing Lidl’s defence that there are ‘clear and obvious differences’ between both products.
Hendricks’ legal team feared that Lidl’s cheaper alternative, which retails for £15.99, could impact on sales of the premium brand gin. Despite not being able to provide evidence in support of claims that this could cause a change in the economic behaviour of the average customer, Hendrick’s successfully convinced the court that Lidl intended to benefit from the reputation and goodwill of the brand, posing at least some risk of financial loss. In his written judgment in the Court of Session in Edinburgh, Lord Clarke stated that with regards to the Hendrick’s trademark, ‘there is visual and conceptual similarity between the mark and the sign’ which is difficult to perceive as being ‘accidental or coincidental’. He concluded that ‘there is sufficient basis for showing that there was an intention to benefit’ and therefore, Hendrick’s has a ‘reasonable prospect of success in showing a change in economic behaviour by customers who buy from Lidl.’ Lord Clarke found in favour of Hendrick’s and it was held that Lidl had breached section 10(3) of the Trade Marks Act 1994.
In his judgment, Lord Clarke said that Lidl could continue selling the Hampstead gin brand if it reversed the changes it had made to its design. Previous case law shows a pattern of reluctance from the court to say that lookalike products are intended to mislead or confuse consumers into thinking that both the original product and the copycat product are linked in trade. However, this decision acts as a warning to other supermarket giants who have been accused of trademark infringement on multiple occasions. It comes just weeks after M&S announced they were taking action against Aldi over its Colin the Caterpillar cake lookalike. Could this decision be the light at the end of the tunnel for Colin…?