In a trade mark battle of the supermarket giants, Tesco has lost its appeal against a decision that it infringed Lidl’s logo. The supermarket will now have to drop its blue and yellow logo used to promote its Clubcard loyalty scheme, with the subsequent rebrand reportedly set to cost Tesco up to £8 million.

So what did the Court of Appeal rule?

• Tesco’s appeal against the finding of passing off against it was dismissed. The Court of Appeal accepted the High Court’s finding that a substantial number of consumers would be misled into thinking that Tesco’s Clubcard prices were the same or lower than Lidl’s prices for equivalent goods.
• Tesco’s appeal against the finding of trade mark infringement was also dismissed. The Court of Appeal found that Tesco’s campaign caused a change in consumer economic behaviour and caused detriment to Lidl. In particular, Tesco’s logo had been successful in slowing the switch from Tesco to Lidl that was otherwise occurring. Lidl also felt obliged to invest in corrective advertising to promote its lower prices compared to Clubcard prices.
• However, Tesco’s appeal against the finding of copyright infringement was successful. The Court of Appeal held that although Tesco had copied the visual concept of a blue square surrounding a yellow circle that is all it had done, and this was not sufficient to amount to copyright infringement.

What does the ruling tell us?

The case shows how difficult it is to appeal a decision of a lower court. The Court of Appeal would only have been entitled to intervene if findings of facts were rationally insupportable, or if the High Court judge had made an error in law or principle. Although the Court of Appeal found aspects of the High Court’s judgment “surprising”, it was mindful that the High Court had the benefit of being immersed in the evidence, whereas the Court of Appeal is only asked to consider selected parts of the written record.

Although Tesco could look to further appeal to the Supreme Court it is understood the supermarket has accepted the Court of Appeal’s ruling.

To read more about the case, and gain insight on what businesses need to consider when designing logos and where the line is drawn between misrepresentation and inspiration, take a look at our recent Retail Law Update here: https://lnkd.in/evN8YtPm

Photo: The Tesco Clubcard Prices design and the Lidl logo. Composite: Rex/Reuters

Welcome to our latest IP update – insight into the most recent cases and developments in IP law. We’ll uncover the news stories most relevant to you and provide insight into what they mean for your business.

To find out more, click here 

If you have any questions about the updates or any IP issues or challenges you’re facing, please contact Melanie McGuirk or Grace Astbury.

Welcome to our latest IP update – insight into the most recent cases and developments in IP law. We’ll uncover the news stories most relevant to you and provide insight into what they mean for your business.

To find out more, click here

If you have any questions about the updates or any IP issues or challenges you’re facing, please contact Melanie McGuirk or Alexandria Winstanley.

In our latest IP round-up, our team shares the latest IP headlines and legal developments from the UK and around the world.

This month we cover the rise of social media copyright infringement claims, the news that Superdry sues Asos for ‘flagrantly’ copying its designs and ASA and CAP’s launch of guidance on advertising in-game purchases.

Read our monthly IP round up here: https://mailchi.mp/pannonecorporate/ip-round-up-october-2021

If you would like to discuss these topics in more detail or have any questions, contact Melanie or Amy:

Melanie McGuirk on 07790 882567 or email melanie.mcguirk @pannonecorporate-com.stackstaging.com

Amy Chandler 07920 237674 or email amy.chandler@pannonecorporate-com.stackstaging.com

Whether a startup business or one with a longstanding history, some of the most important aspects of your business can be those which are easily overlooked. In addition to those tangible assets that are on the balance sheet, the intellectual property underpinning your business is often of vital importance. In the modern world, intellectual property can be one of the most valuable assets that a company has. Putting in place simple steps to defend it is vital for the continuing success of a business.

1 – Register Everything

First and foremost, registering your intellectual property should be the first line of defence. In the UK, registering a trademark or design right is in most cases very cost effective and straight forward and will assist in the protection of your brand and bespoke products. Inventions which may be commercially successful should also justify the greater costs of registering a patent.

The Intellectual Property Office is the government body responsible for all IP rights in the UK. You can find much helpful information on its website as regards how to register your IP.

Remember, you own the intellectual property if you create something protectable.  If an employee creates something in the course of their employment, the business who employs that employee will own any IP subsisting in the creation. There may be cases where you or your business have bought rights from the original creator or owner in order to make sure that you control them.

2 – Monitor Competitor Behaviour

Keeping a keen eye on the activity in the market is key if you want to spot any misuse of your IP. New companies and new products trying to piggyback on your rights to shortcut the time and cost you have invested in your brand or products can be the easiest to spot, but you may even find cases of long-standing competitors skirting the line of infringement.

Having one individual conduct periodic searches online and in trade specific sources is only a small task, but it can be extremely beneficial if misuse of your IP is uncovered before the infringement becomes material.

3 – Documentation

Comprehensive and thorough documenting and record keeping is one of the best defences when it comes to your IP. In the event that a matter becomes contentious, these documents will comprise the evidence and proof which supports your case. Ensuring such data or documents are dated or time stamped and the author clearly recorded should be a priority in terms of normal housekeeping.

4 – Object To and Challenge Unlawful Use of Your IP

Even with the above best practice put into place, there will always remain a likelihood of your IP being infringed or misused. For this reason, you need to be prepared to defend your business and maintain the integrity of your IP when infringement or misuse is discovered. Sometimes something as simple as a cease and desist letter can work, as many companies or individuals will fear further repercussions or full-blown legal action if they do not explore a resolution of the dispute with you on sensible commercial terms. Injunctions and court action may also be required depending on the severity of the infringement.

Do you need more information or guidance in regards to IP? Contact the Pannone Corporate team today, either on 0800 131 3355 for our Manchester office or by filling out the contact form.