Lidl Great Britain Ltd & Anor v Tesco Stores & Anor [2022] EWCA Civ 1433 (02 November 2022}

Lidl Great Britain Ltd & Anor v Tesco Stores & Anor [2022] EWCA Civ 1433 (02 November 2022}

Tesco's pleaded case, assuming its factual allegations to be true, raised sufficient objective indicia of bad faith (defensive registration and evergreening) to overcome the presumption of good faith and warranted a trial of the issue. The judge erred in striking out the counterclaim as the pleadings disclosed a real prospect of success.

Citation
[2022] EWCA Civ 1433
Parties
Claimant/respondent: Lidl Great Britain Limited; Claimant/respondent: Lidl Stiftung & Co KG; Defendant/appellant: Tesco Stores Limited; Defendant/appellant: Tesco PLC
Jurisdiction
England and Wales
Procedural Posture
Appeal (civil) / Appeal From High Court Order Striking Out Paragraphs of Defence and Counterclaim
Outcome
Appeal allowed
Legal Topics
Trade Marks, Bad Faith Registration, Striking Out Pleadings, Evergreening, Defensive Trade Marks
Intellectual Property Civil Procedure Trade Marks Bad Faith Registration Striking Out Pleadings Evergreening Defensive Trade Marks

Case Brief

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Parties

Lidl Great Britain Limited

Claimant/respondent

Lidl Stiftung & Co KG

Claimant/respondent

Tesco Stores Limited

Defendant/appellant

Tesco PLC

Defendant/appellant

Procedural Posture

Appeal (civil) / Appeal From High Court Order Striking Out Paragraphs of Defence and Counterclaim

Legal Issues

  1. 1 Whether Tesco's pleaded case on bad faith registration of Lidl's trade marks disclosed reasonable grounds to proceed to trial
  2. 2 Whether the judge erred in striking out Tesco's counterclaim for invalidity based on bad faith

Ratio Decidendi

Tesco's pleaded case, assuming its factual allegations to be true, raised sufficient objective indicia of bad faith (defensive registration and evergreening) to overcome the presumption of good faith and warranted a trial of the issue. The judge erred in striking out the counterclaim as the pleadings disclosed a real prospect of success.

Court Disposition

Appeal allowed

Orders

  • Order striking out paragraphs 46 to 48 of the Amended Defence and Counterclaim set aside
  • Tesco's counterclaim for invalidity based on bad faith to proceed to trial