Interesting judgment out today from the Court of Session in Scotland (here) confirming that s.10(3) TMA 1994 is the way to fight supermarket look-alikes (for more detail on such claims, see our article: here).
Whilst the interim injunction application did not succeed on s.10(2) TMA and passing off due to the usual difficulty of showing likely confusion when consumers are so aware that supermarkets do look-alikes, it did succeed on s.10(3) on the following basis:
- William Grant had a strong reputation in the device mark for their well-known Hendrick's gin bottle
- It was a transfer of image case because the Hendrick's device mark was, as social media shows, called to mind by the Lidl look-alike
- Following Intel, unfair advantage can be established by showing a change in economic behaviour of the defendant's customers (rather than William Grant's) in other words, Lidl intended to benefit from the reputation and goodwill of William Grant's marks with their look-alike being recognisable to their customers as a Hendrick's equivalent, without needing to undertake any advertising of their own
Although only an interim decision and it remains to be seen what will happen at full trial on the merits (if it does not settle) - this decision is to be welcomed by brand owners who should not have to tolerate such blatant free-riding on their brands by supermarkets. The 'no confusion' argument is looking increasingly perilous for the supermarkets. Well done Colin Hulme and the team at Burness Paull, who are acting for William Grant.
If you would like any further information in relation to this topic, please contact Geoff Steward email@example.com.