WILLIAM GRANT & SONS IRISH BRANDS LTD AGAINST (FIRST) LIDL STIFTUNG & CO KG AND OTHERS [2021] ScotCS CSIH_38 (20 July 2021)

WILLIAM GRANT & SONS IRISH BRANDS LTD AGAINST (FIRST) LIDL STIFTUNG & CO KG AND OTHERS [2021] ScotCS CSIH_38 (20 July 2021)

The IP judge was entitled to find a prima facie case of infringement under section 10(3) of the Trade Marks Act 1994, as Lidl's Hampstead gin bottle was sufficiently similar to Hendrick's gin to create a link in consumers' minds and potentially take unfair advantage of the trade mark's reputation. The Scottish court has jurisdiction to grant an interdict with UK-wide effect against defenders domiciled in Scotland.

Citation
[2021] ScotCS CSIH_38
Parties
Pursuer and Respondent: William Grant & Sons Irish Brands Limited; Defender and Reclaimer: Lidl Stiftung & Co KG; Defender and Reclaimer: Lidl UK GmbH; Defender and Reclaimer: Lidl Great Britain Limited
Jurisdiction
Scotland
Judgment Date
14 March 2021
Procedural Posture
Reclaiming Motion (appeal) in Trade Mark Infringement Proceedings / Interim Interdict and Cross Appeal
Outcome
Cross appeal allowed; reclaiming motion refused quoad ultra; interlocutor amended to remove territorial restriction to Scotland.
Legal Topics
Trade Mark Infringement, Interim Interdict, Jurisdiction, Unfair Advantage, Passing Off
Intellectual Property Commercial Law Trade Mark Infringement Interim Interdict Jurisdiction Unfair Advantage Passing Off

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 22 Party arguments 2 Amounts and remedies 7
Sign in to unlock

Parties

William Grant & Sons Irish Brands Limited

Pursuer and Respondent

Lidl Stiftung & Co KG

Defender and Reclaimer

Lidl UK GmbH

Defender and Reclaimer

Lidl Great Britain Limited

Defender and Reclaimer

Procedural Posture

Reclaiming Motion (appeal) in Trade Mark Infringement Proceedings / Interim Interdict and Cross Appeal

Legal Issues

  1. 1 Whether Lidl's Hampstead gin infringed the Hendrick's Trade Mark under section 10(3) of the Trade Marks Act 1994 by taking unfair advantage
  2. 2 Whether the interim interdict should be restricted to Scotland or extend UK-wide

Ratio Decidendi

The IP judge was entitled to find a prima facie case of infringement under section 10(3) of the Trade Marks Act 1994, as Lidl's Hampstead gin bottle was sufficiently similar to Hendrick's gin to create a link in consumers' minds and potentially take unfair advantage of the trade mark's reputation. The Scottish court has jurisdiction to grant an interdict with UK-wide effect against defenders domiciled in Scotland.

Court Disposition

Cross appeal allowed; reclaiming motion refused quoad ultra; interlocutor amended to remove territorial restriction to Scotland.

Orders

  • Recall territorial restriction 'in Scotland' from IP judge's interlocutor of 18 May 2021
  • Adhere to interlocutor as amended