Lidl owns trademarks for a logo with the word “Lidl” in a yellow circle on a blue square background (“the Mark with Text”), used since 1987, and a logo without the word (“the Wordless Mark”), which Lidl has never used in the form in which it was registered.
Tesco used similar signs consisting of a yellow circle on a blue background in their marketing since 2020 and Lidl consequently claimed trademark infringement, passing off, and copyright infringement in the Mark with Text as an artistic work.
In addition to denying these claims, Tesco also counterclaimed that the Wordless Mark was invalidly registered, alternatively for an order for revocation on the ground of non-use of the Wordless mark.
The court found Lidl succeeded in their claims but also upheld Tesco’s counterclaim that the Wordless Mark was invalid on the ground that the registrations had been applied for in bad faith.
Tesco consequently appealed against the findings of trademark infringement, passing off, and copyright infringement, and Lidl appealed against the finding that the registrations of the Wordless Mark are invalid and in bad faith.
Tesco’s appeal against passing off was dismissed, as well as their appeal against the finding of trade mark infringement based on detriment to the distinctive character of the Mark with Text, and Lidl’s appeal against the finding of bad faith was also dismissed.
With regards to Tesco’s appeal against the finding of copyright, the appeal court held that copyright requires creative expression, not merely technical elements and although the degree of creativity involved in the creation of Lidl’s mark was low, it was not a purely mechanical exercise, nor was the result dictated by technical considerations, rules, or other constraints which left no room for creative freedom; and the court further held that although the work is sufficiently original to attract copyright, the scope of protection conferred by that copyright is narrow and Tesco did not copy enough of Lidl’s work to infringe on their copyright.
Written by Mia Storbeck, Candidate Attorney at Stegmanns Incorporated