Ewan Grist

Who? Ewan Grist, partner in the intellectual property practice at Bird & Bird, London.

Why is he in the news? The firm represented discount retailer Lidl, which won claims of trade mark and copyright infringement against supermarket heavyweight Tesco over the yellow circle and blue square that make up its logo. In a 102-page judgment, Mrs Justice Joanna Smith DBE found in favour of Lidl, but also found in favour of Tesco on its counterclaim of bad faith in respect of a wordless logo.

Thoughts on the case: ‘Unlike most trade mark infringement cases, the focus was not on whether customers were confused between Lidl and Tesco, but rather whether Tesco’s use of the Clubcard logo took unfair advantage of Lidl’s reputation for value, by wrongly suggesting that there was some kind of price matching going on. Price matching is an extremely important marketing tool used by many supermarkets to win the battle for customers. But because customers need to be able to rely on such guarantees, price matching must be done openly and fairly. The problem here for Tesco was that the judge found that a substantial number of customers were being deceived. The case therefore looked at how, in certain circumstances, using a mark similar to a competitor’s trade mark can be unlawful, even where customers are fully aware that the two businesses are separate. The case also covered a number of other thorny issues in trade mark law, such as the use of survey evidence and the ever-evolving law on bad faith trade marking filing.’

A Tesco spokesperson said: ‘This claim brought by Lidl was just about the colour and shape of the Clubcard Prices logo. The judge’s ruling concluded that there was no deliberate intent on Tesco’s part to copy Lidl’s trademark. It has no impact on our Clubcard Prices scheme which we will continue to run in exactly the same way. We intend to appeal.’

Dealing with the media: ‘Understandably, there has been a great deal of interest in this case, both among the general public and also of course among the IP community. After all, it is relatively rare for two such well-known businesses to lock horns in litigation about their main brands. The difficulty with media reporting of trade mark cases, particularly in the national press, is that it often doesn’t quite capture what the case is actually about, making it prone to be misunderstood by the public. Even where the trade mark in question is a simple logo well known to everyone, the law and evidence underpinning a judgment is almost always extensive, complex and nuanced. The judgment in this case, for instance, ran to over 100 pages of really detailed analysis. In reality, few journalists are likely to be able to read and digest such a judgment in full before needing to go to print on tight deadlines. When dealing with the media following such a case, much care needs to be taken to make sure that the case is properly understood and explained as well as possible.’

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