Introduction

The case of William Grant & Sons Irish Brands Ltd against (First) Lidl Stiftung & Co KG and Others ([2021] ScotCS CSIH_38) adjudicated by the Scottish Court of Session on July 20, 2021, delves into significant aspects of trade mark law, particularly focusing on the territorial scope of interim interdicts in trade mark infringement cases. This commentary explores the intricacies of the case, summarizing the court's decision, analyzing the legal reasoning, and evaluating its implications for future legal proceedings in the realm of intellectual property.

Summary of the Judgment

The pursuers, William Grant & Sons Irish Brands Ltd (referred to as Grants), alleged that the defendants, comprising various entities of Lidl, infringed their registered trade mark for Hendrick's Gin by marketing Hampstead London Dry Gin in a design strikingly similar to Hendrick's distinctive bottle and label. The core of the dispute revolved around whether Lidl's use constituted taking unfair advantage of Grants' trade mark under subsection 10(3) of the Trade Marks Act 1994.

The Intellectual Property (IP) judge initially granted an interim interdict restraining Lidl from selling Hampstead gin in the contested design within Scotland. Lidl appealed, challenging both the merits of the initial decision and the territorial limitation of the interdict.

The Inner House upheld the IP judge's decision to maintain the interdict within Scotland but dismissed Lidl's attempt to extend its scope beyond the jurisdiction. This decision affirmed the principles governing the geographical limitation of interim remedies in trade mark disputes.

Analysis

Precedents Cited

The judgment extensively referenced established case law to support its reasoning:

• Intel Corp v CPM United Kingdom [2009] ETMR 13: Highlighted the significance of whether a sign is called to mind by consumers, irrespective of actual confusion.
• Specsavers International Healthcare v Asda Stores [2012] ETMR 17: Emphasized that even without direct confusion, the similarity could invoke a link in consumers' minds.
• Argos v Argos Systems [2019] Bus LR 1728: Discussed how changes in economic behavior of consumers could indicate unfair advantage.
• Sieckmann v Deutsches Patent und Markenamt [2003] Ch 487: Established criteria for graphical representation of trade marks.
• Lucasfilm v Ainsworth [2012] 1 AC 208: Provided insight into the extraterritorial application of interdicts within the UK.

Legal Reasoning

The court's legal reasoning centered on whether Lidl's redesigned Hampstead gin bottle and label were sufficiently similar to Hendrick's trade mark to constitute taking unfair advantage under subsection 10(3) of the Trade Marks Act 1994. The key points included:

• Prima Facie Case: The IP judge found that Lidl's alterations were not accidental and indicated an intention to benefit from Hendrick's established reputation.
• Territorial Scope: The court affirmed that interim interdicts are jurisdictionally confined unless exceptional circumstances warrant a broader application.
• Balance of Convenience: Weighing the potential harm to Grants against the inconvenience to Lidl, the judge favored maintaining the interdict within Scotland to prevent imminent damage.
• Intention to Benefit: Even without explicit intent to deceive, the court recognized the likelihood that Lidl aimed to leverage the prestige associated with Hendrick's trade mark.

Impact

This judgment reinforces the principle that interim interdicts in trade mark cases are territorially limited, aligning with the delineations set forth by the Civil Jurisdiction and Judgments Act 1982. It underscores the necessity for applicants to demonstrate both a prima facie case of infringement and justify the geographical scope of remedies sought. Future cases will likely reference this decision when contesting the reach of interim orders, ensuring that courts adhere to jurisdictional boundaries unless compelling reasons exist for broader intervention.

Complex Concepts Simplified

Interdict

An interdict is a court order that restrains a party from performing a particular action. In this case, the interdict prevented Lidl from selling Hampstead gin in a specific bottle design.

Prima Facie Case

A prima facie case refers to sufficient evidence presented to support a claim, unless disproven. Grants established enough initial evidence to suggest that Lidl's actions might infringe their trade mark.

Sub-section 10(3) of the Trade Marks Act 1994

This provision addresses situations where a party uses a sign identical or similar to a registered trade mark, taking unfair advantage of the trade mark's reputation or distinctive character.

Balance of Convenience

The balance of convenience involves weighing the potential harm or benefit to both parties when issuing an interim relief. The court assesses which party would suffer more harm if the interdict is granted or denied.

Forum Non Conveniens

Forum non conveniens is a legal doctrine allowing courts to dismiss a case if another court or forum is deemed more appropriate for hearing the case.

Conclusion