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  • Writer's pictureRosie Burbidge

Tesco's Clubcard logo is a Lidl bit too similar - find out why

Lidl has succeeded in its trade mark infringement, passing off and copyright claims against rival supermarket Tesco.

Lidl owns UK trade mark registrations for its blue-and-yellow logo both with and without text. It sued Tesco over the Clubcard Prices promotion, launched in September 2020, which uses signs on a yellow circle against a blue square (referred to by the judge as the CCP Signs).

Section 10(3) infringement

Lidl claimed that Tesco’s use took unfair advantage, or was detrimental to, the distinctive character or repute of its mark under Section 10(3) of the Trade Marks Act.

The judge, Mrs Justice Joanna Smith DBE, said she was satisfied that the average consumer seeing the signs as a whole would perceive them as similar:

“The visual similarity is here the significant feature and, whilst I accept that the text represents an important point of difference, nonetheless I do not consider that it has the effect of extinguishing the strong impression of similarity conveyed by their backgrounds in the form of the yellow circle, sitting in the middle of the blue square.”

She was fortified in this view by evidence that Tesco’s own team members noted the similarity, as did consumers on Twitter.

Having reviewed the wide range of evidence submitted, which included surveys, the judge was also satisfied that Lidl has established the existence of a “link” between the mark and the sign:

There is clear evidence of both origin and price match confusion/association together with evidence that Tesco appreciated the potential for confusion. I consider that the average reasonably observant consumer encountering the CCP Signs in the real world at the date of the launch of the Clubcard Price campaign would draw a link between the Uses of the CCP Signs and the Mark with Text and that the available evidence amply bears out my conclusion.”

While she said that Tesco had not acted with intention, she found that there was detriment to the distinctive character of Lidl’s mark, “evidenced by the fact that it has found it necessary to take evasive action in the form of corrective advertising”. She also found that Tesco had taken unfair advantage of the distinctive reputation of the Lidl marks:

In my judgment, the CCP Signs were plainly intended (amongst other things) to convey value and thereby to influence the economic behaviour of supermarket shoppers, notwithstanding that I have found no specific intention to free-ride on Lidl's reputation. I agree with Lidl that, just as occurred in Jack Wills, the effect of the use of the CCP Signs was to cause a ‘subtle but insidious’ transfer of image from the Mark with Text to the CCP Signs in the minds of some consumers.”

The judge rejected Tesco’s defence of due cause, which was based on the commonplace nature of the colour yellow and basic geometric shapes in supermarkets, and the fact that blue is its own livery colour:

The question here is not whether there is due cause for use of elements of the CCP Sign, but whether there is due cause for the combination of elements used in the sign as a whole … To my mind, however, none of this evidence satisfies the burden of establishing due cause to extend the use of the yellow value roundel by superimposing it on a blue background.”

Passing off and copyright infringement

The judge also found there was passing off: goodwill was established, there was misrepresentation (on the ground that a substantial number of consumers had been and would be deceived) and Lidl had suffered damage as a result.

On Lidl’s copyright claim, Joanna Smith J found that the mark with text was an original artistic work: “the act of bringing together the Lidl text with the yellow circle and the blue background was an act which involved skill and labour – the combination of colours and shapes and the orientation of the various elements”. She also found that Wolff Olins (Tesco’s design agency) copied the Lidl logo as part of its exploratory work and that Tesco adopted that copy, saying: “The fact that there was no deliberate intention positively to evoke Lidl does not mean that the design was not copied with the focus being on the message that a blue and yellow background would convey for the Clubcard campaign.”

Notably, the judge found that the written evidence of one of Tesco’s witnesses was incomplete and inaccurate and she drew an adverse inference from Tesco’s failure to call anyone from Wolff Olins to give evidence.

Bad faith and evergreening

The one success for Tesco arose from its claim that registrations for the wordless mark (filed in 1995, 2002, 2005, 2007 and 2021) were invalid. The judge rejected attacks based on non-use and lack of distinctive character but agreed that most of the registrations were invalid for bad faith, due to evergreening.

Following the judgment of the Court of Appeal following an earlier hearing in this case (which we reported here), the judge said the evidential burden rested with Lidl. She found that the original wordless mark was “registered in order to use it as a weapon to secure a wider legal monopoly than it was entitled to, with no genuine intention to use it”. The same was true of subsequent applications, which were also designed in part to evergreen and avoid sanctions for non-use – except for the 2021 application where Lidl’s evidence of subjective intention overcame any adverse inference.

What does this mean?

This is a large and complex case, with substantial evidence filed on both sides. It may not be over yet either, as Tesco has said it will seek to appeal the judgment.

The outcome has raised some eyebrows, but the case illustrates well the importance of having an arsenal of IP rights, including various trade mark registrations and copyright, to protect key brands. It also demonstrates the significance of building strong evidence in litigation in the UK courts. The unreliability of one witness, combined with the absence of representatives of Wolff Olins, undermined Tesco’s copyright defence, while survey evidence, vox populi comments on Twitter and emails between Tesco executives were critical for the trade mark infringement finding.

It is also notable that, while there is no requirement to show “confusion” for Section 10(3) infringement, the evidence of both actual and potential confusion was significant in the judge’s assessment, in particular regarding the existence of a “link” between the mark and the sign.

I expect we will be discussing this judgment for many months to come!

To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London -


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