• Transform magazine
  • June 14, 2021

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European chain supermarket loses out in trade mark battle of the gin bottles

Laurie Bray

Following the recent trade mark rights issue about ‘Colin the Caterpillar’ cake, Laurie Bray, senior associate and trade mark attorney at European intellectual property firm Withers & Rogers, explores another trade mark ingringement claim to argue that low cost retailers producing own brand copies of premium-branded products can expect to face legal challenges in the future.

European supermarket chain Lidl has been forced to stop selling its own brand gin on the grounds that it looks too similar to that produced by premium gin maker, Hendrick’s.
 
The move to ban the sale of the lookalike gin came following a trade mark infringement claim brought by Scottish gin maker, William Grant & Sons, which produces Hendrick’s.
 
In his ruling at the Court of Session in Edinburgh, Lord Clark commented on the ‘visual and conceptual similarity’ between the two gin bottles and noted that ‘bottle shape and colour are often intended as distinguishing features of gin products’.
 
The case brought against Lidl referred to the fact that the retailer changed the design of its own brand gin, Hampstead, last year, in order to benefit from the reputation of the Hendrick’s brand. The re-design included a diamond-shaped label and lettering which resembled that used on bottles of Hendrick’s.
 
The case has some similarities with that brought by UK retailer M&S against supermarket chain Aldi for the alleged infringement of its trade mark rights in relation to its popular ‘Colin the Caterpillar’ cake. This case was heard by the UK High Court in early May and a ruling is awaited.
 
Getting back to the battle of the gins, the makers of Hendrick’s were concerned that consumers would confuse the two gin products, because the design of the bottles is too similar. The company provided evidence to the court in the form of social media messages to show that some consumers thought there might be an association between the two products.
 
Coming on the back of the recent Colin the Caterpillar case, it is clear that there is a pattern emerging. Low-cost retailers that are intent on producing own brand copies of premium-branded products should expect to face legal challenges in the future.