Makers of popular gin obtain interim interdict in trade mark claim against ‘own-label’ copy

William Grant and Sons Irish Brands Ltd, the owner of the Hendrick’s brand, raised the action against Lidl Stiftung & Co KG, Lidl UK GmbH, and Lidl GB Ltd, claiming infringement of trade mark. It was also claimed that the defenders were intending to trade off their reputation and thus committing the delict of passing-off. The pursuer sought interim interdict preventing the sale of the infringing product while litigation was ongoing.

The case was heard in the Outer House of the Court of Session by Lord Clark. The pursuer was represented by Dean of Faculty, Roddy Dunlop QC and Usman Tariq while Lord Keen of Elie QC and Ewen Campbell appeared for the defenders.

Constellation of changes

The trade mark owned by the pursuers covered the shape of the Hendrick’s gin bottle, not restricted to any particular colour, along with its diamond-shaped label. The pursuers had sold Hendrick’s gin in a bottle of this manner since 2000 in almost all major supermarkets and off-sale retailers in the United Kingdom.

In late 2020, the third defender re-designed the bottle of its “Hampstead” gin product in a manner which the pursuer considered to be trade mark infringement. In particular, the colour of the bottle was changed from green to a dark brown, and the style of the bottle was changed from a ‘traditional’ gin bottle shape to one more closely resembling the ‘apothecary-style’ bottle in the Hendrick’s trade mark.

In addition to the changes to the bottle, the Hampstead diamond-shaped label was also changed from white to a similar colour used in the Hendrick’s logo and included images of cucumbers, which the pursuer claimed alluded to the fact that Hendrick’s gin is traditionally (and usually for a gin) served with a garnish of cucumber.

Counsel for the pursuer submitted that, in light of these changes and the fact that this product was only sold in the United Kingdom, where the defenders do not stock Hendrick’s gin, there was no credible explanation for the redesign other than the defenders having an intention to take unfair advantage of the Hendrick’s brand. The high degree of distinctiveness of the Hendrick’s trade mark increased the likelihood of confusion among customers.

In seeking interim interdict, the pursuer submitted that the balance of convenience was in their favour. There was a real risk of the defenders’ product swamping the pursuer’s product and eroding the distinctiveness of the Hendrick’s trade mark. If the defenders wished to continue selling Hampstead gin, they could easily revert to the previous get-up.

In response, the defenders submitted that the average consumer shopping at Lidl was familiar with its business model and not expecting to find Hendrick’s gin for sale there. They currently had no “branded” spirits listed as products nationally. Further, there were a number of distinct differences between the products, including price, the shape of the bottle neck, and the recommendation on the back label of Hampstead gin that it be served with elderflower tonic.

Riding on coat-tails

In his opinion, Lord Clark said of the appearance of the products: “Notwithstanding the existence of some measure of dissimilarity, having regard to a comprehensive assessment, there is a sufficient basis to argue visual and conceptual similarity between the mark and the sign. Bottle shape and colour are often intended to be distinguishing features of gin products.”

However, on whether there was likely to be any confusion on the consumer’s part, he said: “Having regard to the fact that, on the information put before me, the Hampstead bottle is in stock only in Lidl and is priced at £15.99 rather than the significantly higher price of Hendrick’s, and standing the differences that do exist, such as the names, I am unable to conclude that the average consumer would be likely to be confused as to common commercial origin.”

Turning to the pursuer’s case for passing-off, Lord Clark began: “I do consider that there is sufficient material, from the information put before me, to infer (for the purposes of a prima facie case) that there was a deliberate alteration of the get-up of the Hampstead product to seek to cause at least an association with Hendrick’s.”

He went on to say: “It is readily to be inferred that, in taking these steps, the defenders’ plan was to increase the attraction of the Hampstead product to their customers and, on the information available, that appears to have been done where the defenders did not undertake any advertising or promotion for the marketing of the Hampstead product. There was no suggestion of any separate justification for the defenders’ conduct; that is, no suggestion of this being done with due cause.”

Having regard to social media and YouTube material submitted by the pursuers in which users noted the similarity between the products, he added: “Although I fully recognise its limited evidential significance, there is some support within that material for the proposition of Lidl riding on the coat-tails of the Hendrick’s mark so as to benefit from its attraction and also that this could influence the economic behaviour of the defenders’ customers.”

Broad-axe view

On whether the balance of convenience supported the granting of an interim interdict, Lord Clark said: “The court will be able to adopt a broad-axe view, based on information the defenders can readily supply as to sales of the new Hampstead gin prior to this decision and sales of other products within their units, to calculating quantum for lost sales if the defenders succeed. The defenders also have another get-up to sell the product, which is not challenged, so it is just the sales of Hampstead in this particular get-up that are stopped.”

He concluded: “Preservation of the status quo can be a factor but where a new product has just been brought on to the market it is not of great significance. On the defenders’ other point that there has been a delay in raising the proceedings, the parties were in communication for a period of time about the issues and I am not persuaded that there was any unjustified delay that could affect the balance of convenience.”

For these reasons, Lord Clark granted interim interdict preventing the sale of Hampstead gin in its current get-up in Scotland. The pursuers’ crave that the order be extended beyond Scotland was rejected.