Lidl, whose logo uses its name on a yellow circle in a blue square, sued Tesco for using a yellow circle on a blue square for its Clubcard members’ discount scheme, arguing this infringed its copyright and took unfair advantage of its reputation.
Ruling in Lidl v Tesco [2024] EWCA Civ 262 this week, the Court of Appeal overturned the High Court’s decision last year that Tesco’s Clubcard logo constituted trade mark and copyright infringement and passing off of Lidl’s logo. It also dismissed Lidl’s appeal against the High Court’s finding its trademark of the same logo without the word ‘Lidl’ had been filed in bad faith.
However, the court also upheld the High Court’s finding of fact that Tesco’s use of the blue square and yellow circle might mislead some consumers into thinking Tesco was price matching Lidl, to the extent that this constituted trademark infringement and passing off. Consequently, Tesco must now change its Clubcard logo.
Richard Kempner, partner at Haseltine Lake Kempner, who acted for Tesco, said: ‘It’s obviously a disappointing result.
‘The judge in the first instance case had got the law [of passing off and trade marks] right, which meant that Tesco’s only recourse was to try and overturn her findings of fact. Findings of fact are notoriously difficult to overturn on appeal. The threshold is an extremely high one.
‘It’s necessary to show that the judge’s findings were “rationally insupportable”. So a first instance judge can make findings that others wouldn’t necessarily agree with (as here, where the court voiced its surprise at those findings) but that is not enough to have those findings overturned.’
Kempner said the case illustrated that first instance findings of fact are difficult to overturn.
