Tesco has won a court of appeal scrap with rivals Lidl, allowing it to argue the latter applied for a trademark claim “in bad faith”.
In a judgment this week, Britain’s biggest supermarket has been “permitted to continue to argue at trial that a wordless version of Lidl’s logo was periodically filed and refiled by Lidl in bad faith”.
It said this overturns a decision made by the High Court, “which had previously disallowed Tesco’s allegations of bad faith.”
According to Reuters, Tesco filed a counterclaim in 2021, after Lidl’s lawsuit said Tesco was trying “to ride on [its] coat-tails” using a logo featuring a yellow circle on a blue background.
The claim relates to Tesco’s Clubcard Prices loyalty discount scheme, with Lidl saying that the sign used by Tesco constitutes an infringement.
Richard Kempner, partner at Haseltine Lake Kempner, who represented Tesco, called the decision important, saying the supermarket based its argument firstly on “the fact that Lidl had never used.. the wordless mark in the form in which it was registered, 27 years since they had first applied for it.”
Secondly, he said Lidl tried to avoid a rule called ‘non-use’, whereby trademarks that have not been used for five years can be revoked. Lidl had kept reapplying for it periodically.
He added that Lidl argued “there were a number of entirely legitimate reasons why it might have applied for the wordless marks, and that Tesco had not provided a sufficient basis for its claim of bad faith”
“The Court of Appeal however decided that Tesco’s claim had ‘a real prospect of success’.”
Lidl told City AM: “This appeal is only a small procedural aspect of the case and we remain confident in the outcome of the trial in 2023. Our survey, which has been accepted as evidence by the High Court shows that well over 70% of UK grocery shoppers recognise our distinctive Lidl logo even without the word LIDL on it. It’s important that customers are not being misled on value by Tesco through their use of a sign which is strikingly similar to our logo.”