By Maria Ward-Brennan
Tesco has today failed to overturn a decision at the Court of Appeal, that it infringed on Lidl’s trademark by using a small blue and yellow logo for its clubcard ad.
Tesco’s ‘Clubcard Prices’ promotion used a blue square with a yellow circle with the words ‘clubcard prices’ inside and were hit with legal action by rivals Lidl.
Lidl went on to sue Tesco, which is Britain’s biggest supermarket, as it used a blue square with a yellow circle with its name inside for its well-known logo.
The German supermarket filed a trademark, copyright Infringement and passing off action claim, and the parties were at the High Court in February 2023.
The court sided with Lidl on the point that Tesco infringed on its trademark – with words – however, the court said Lidl’s claims of trademarks of the same circle and square with no text, were invalid.
Following the High Court judgment, Lidl went on to seek an injunction preventing Tesco from infringing its trademark. The court ruled in August that Lidl can have an injunction to stop rival Tesco copying its logo, which was noted as the time of potentially costing Tesco nearly £8m pounds to remove them all.
The supermarket giants were back in court last month as Tesco aimed to appeal the ruling and sought to appeal the imposition of the injunction. While Lidl is appealing the finding that its trademarks of the same circle and square with no text were invalid.
The parties were in front of Lord Justice Lewison, Lord Justice Arnold and Lord Justice Birss.
On Tuesday, the Court of Appeal with Lord Justice Arnold leading, ruled to dismiss Tesco’s appeal against the findings of trade mark infringement and passing off.
He allowed Tesco’s appeal against the finding of copyright infringement. He also dismissed Lidl’s appeal against the trademarks of the same circle and square with no text were invalid.
He added that Tesco’s appeal against the copyright injunction is moot.
Lord Justice Lewison added that he has “nothing to add to Lord Justice Arnold’s analysis of the bad faith claim or the copyright claim,” but he “found the trade mark claim and the passing off claim very difficult, at the outer boundaries of trade mark protection and passing off.”
It is understood that Tesco will be honouring the judgment and will make an update to its Clubcard Prices logo in the coming weeks.
Commenting on the decision, a Tesco spokesperson said: “Our customers always tell us just how important Clubcard Prices are to giving them great value – and it’s been a key reason why we’re consistently the cheapest full-line grocer.”
“We are disappointed with the judgment relating to the colour and shape of the Clubcard Prices logo but would like to reassure customers that it will in no way impact our Clubcard Prices programme.”
“Clubcard Prices, irrespective of its logo, will continue to play a central role in rewarding our Clubcard members with thousands of deals every week,” the Tesco spokesperson added.
While a Lidl spokesperson said: “Last year, the High Court ruled that Tesco’s Clubcard logo was copied from ours and infringed our trademark rights, allowing them to unfairly benefit from our longstanding reputation for value while misleading its customers. Despite this, Tesco prolonged the dispute by appealing, deceiving customers for another year.”
“Therefore, we are delighted to see that the Court of Appeal has now agreed with the High Court that Tesco’s use of its Clubcard logo is unlawful. We expect Tesco now to respect the court’s decision and change its Clubcard logo to one that is not designed to look like ours,” they added.
