It’s a Long Way to the Top Shelf if You Want Your Mimic to Roll
In William Grant & Sons Irish Brands Limited v Lidl Stiftung & Co KG 2021 CSIH 38 the Scottish Court of Session for the Inner House (CSIH) upheld the Outer House interim interdict finding that Lidl’s rebranded gin bottle takes unfair advantage of the reputation William Grant has in its HENDRICK’S gin bottle.
William Grant sought an interim interdict (interim injunction) in relation to Lidl’s HAMPSTEAD gin after Lidl rebranded their gin bottle bringing it closer in appearance to William Grant’s HENDRICK’s bottle.
HENDRICK’s as used --- HENDRICK’S 2013 Registration --- Lidls’ HAMPSTEAD before Rebrand --- Lidls’ HAMPSTEAD as Rebranded --- HENDRICK’S 2021 Registration
William Grant began marketing its HENDRICK’S gin in 2000 in a dark brown/black, opaque, Victorian apothecary-style bottle and suggests it be served with cucumber rather than lemon or lime. They obtained registration for the above depiction in 2013. Although the registration mentions colours in the Description/Limitation field, the interdict Judge held these to refer to the label rather than the bottle. In late 2020 Lidl changed to a dark brown/black, opaque, Victorian apothecary-style bottle and also changed the label which now has cucumber images, and like the HENDRICK’S bottle also has images of juniper and scroll designs in the same areas of the label. William Grant considered the changes amounted to passing off and infringe its trade mark in two ways: (i) being deceptively similar; and (ii) by tarnishing or taking advantage of the considerable reputation in the HENDRICK’S get-up.
While noting the significant visual and conceptual similarities, on the available evidence the interdict Judge rejected the deceptively similar pleading on the basis that the relevant consumer would not be confused as to there being a common commercial origin, particularly on account of the differences in the names and prices. Those differences, along with a finding that Lidl was living dangerously rather than deliberately intending to deceive, also factored in the interdict Judge rejecting the passing off pleading.
However, the Judge found there was sufficient basis at the interdict stage for an arguable case that Lidl was taking advantage of the considerable reputation in the HENDRICK’S get-up. The similarities were sufficient to call the HENDRICK’S bottle to mind, even if the differences counted against an arguable case of confusing similarity. While there was little in the way of evidence of change in economic behaviour of relevant consumers, the Judge was nonetheless satisfied that Lidl intended to benefit from the reputation in the HENDRICK’S get-up. The similarities following the rebrand were considered not to be accidental or coincidental, but rather were an attempt to change the economic behaviour of consumers by closely mimicking the well-known brand with there being no evidence of a separate justification.
The Judge went on to find the balance of convenience favours the issuing of an interim interdict preventing Lidl from marketing its HAMPSTEAD gin in the dark, apothecary-style bottle, although held that the pleadings did not justify extending it beyond Scotland. Lidl appealed the unfair advantage finding, while William Grant appealed the interim interdict being restricted to Scotland.
In response to Lidl’s appeal pleadings that the 2013 registration does not cover a dark bottle William Grant amended their pleadings to include their May 2021 registration of a photo of their labelled bottle, and the CSIH allowed that amendment. However, the CSIH did not take the 2021 registration into account as they held the interdict Judge correctly applied the law in finding that there was a prima facie case of infringement by way of taking advantage of the reputation of another trader’s product. They agreed that the 2013 registration depicts a bottle of a particular shape and bearing a coloured label, and that it does not show a white bottle, nor does it expressly limit itself to a clear bottle. They also agreed that Lidl’s rebranding of its HAMPSTEAD gin at least called to mind the HENDRICK’S get-up and intended to benefit from closely mimicking the well-known brand.
Regarding the geographical scope of the interim interdict the CSIH noted that on account of Lidl being domiciled in England, Scotland and Wales there was the option of initiating proceedings in any of those jurisdictions and that there is no need for separate proceedings given that the Trade Marks Act applies across the UK. The CSIH held that the interim interdict should not have been restricted to Scotland and ordered such.