April 2024 However, comments are made on the trial Judge’s “surprising” finding of fact.
In her article in May 2023, Chloe Sullivan reported on the High Court Decision on Lidl’s trade mark infringement and passing off action against Tesco. Recall: the Judge’s first instance Decision was Tesco’s use of their Clubcard prices (CPP) logo infringed Lidl’s copyright and trade mark rights. Tesco subsequently appealed that Decision, and the Appeal Court has recently issued its Decision on that appeal.
In a little more detail, Lidl had argued that Tesco had infringed its copyright, trade mark registration, and passing off rights of its Lidl logo, by Tesco’s use of their Clubcard prices (CPP) logo. This argument succeeded in the Judge’s Decision. However, the Judge also held that Lidl’s wordless mark was registered in bad faith, as Lidl had no intention of using that mark. The relevant logos are set out below:-
Tesco’s CCP sign in use
Lidl’s Logo
The Court of Appeal upheld the decision in relation to passing off and trade mark infringement but did make some comments on the trial judge’s “surprising” findings of fact.
An appeal in the UK is not simply a re-run of the original trial, but a review of critical aspects thereof as raised by the appellant. The Appeal Judges do not re-hear witnesses or review all of the evidence presented; while there is a hearing, with regards to the evidence the Judges work from the papers, including transcripts of evidence, where necessary. As a result, appeals in relation to finding of fact by the trial judge can be overturned only if the findings are rationally insupportable. Equally, where appeals relate to evaluations based on many factors, the appeal court can overturn conclusion only if the trial judge erred in law or principle and thus needed to consider whether the trial judge was justified in reaching her conclusion based on the evidence, and not reach their own conclusion on the matter.
In their appeal, Tesco argued that the trial judge was wrong to conclude that the public considered the use of the Tesco’s club card prices (CCP) logo to indicate that price of the item had been “price-matched” with the Lidl price for the equivalent item.
The Appeal Court therefore assessed the evidence used by the trial judge and concluded that while it was at least “surprising” that she concluded that a substantial number of consumers would be misled into believing that “price-matching” was indicated, she was entitled to consider the evidence that she did, and to believe that the strands of the evidence reinforced each other. The Court did consider that she had made a minor error in that she considered the evidence of the two witnesses as being “consistent” when the evidence of one went much further than the evidence of the other, and thus she put too much weight on the evidence of one of the witnesses. Nevertheless, while “surprising,” the finding of the trial judge was not “rationally insupportable”.
As a consequence, Tesco’s appeal in relation to passing off failed.
Tesco made additional arguments with respect to the trade mark infringement decision, but for essentially the same reasons, namely that the findings of fact by the trial judge were not unjustified, and there was no error of law or principle, the Appeal Court was slightly reluctantly, unable to overturn the Decision.
Additionally, the Court of Appeal was able to overturn the Decision of the High Court in relation to copyright infringement. Here, the case turned on the different iterations of the Lidl mark and what was protected by each iteration. The last version of the mark introduced the blue square as the only new feature, and as Tesco did not copy the specific colour of the blue, nor the distance between the edge of the circle and the edge of the blue square, the Appeal Court was able to conclude that there was no infringement.
Lidl had also appealed the aspect of the High Court Decision that went against them, this relating to the wordless version of their mark. Here the trial judge had found that the mark was registered in bad faith as there was no genuine intention of using the mark. The Appeal Court reviewed the evidence on which this decision was based and concluded that the trial judge was right to find that the evidence of evergreening supported bad faith and thus no error has been made.
In conclusion, while the Appeal Court Judges had criticisms of the trial judge and found some of her conclusions and finding of fact “surprising”, they were obliged to uphold the decision in relation to passing off and trade mark infringement as they could not conclude the findings were “rationally insupportable”. Ultimately, this decision illustrates the limitations on Appeals in the UK Courts.
