In 2023, the High Court determined that Tesco’s use of its Clubcard logo amounted to trademark infringement, passing off, and copyright infringement of Lidl’s logo. The High Court also said, however, that Lidl had registered certain trademarks in bad faith. Both Tesco and Lidl appealed the decision.
In March 2024, the Court of Appeal granted Tesco’s appeal in part, specifically against the finding of copyright infringement of Lidl’s logo. However, it upheld the lower court’s findings that enough consumers might be misled by Tesco’s signs so as to constitute trademark infringement and passing off by Tesco. The Court of Appeal dismissed Lidl’s appeal against the finding of bad faith registrations.
Evidence in trademark and passing off cases
As the Court of Appeal recognised: “It is well known that two types of evidence often cause difficulty in trademark and passing off cases, namely survey evidence and expert evidence.”
Surveys
It is very difficult to design a survey that complies with the court guidelines and that is directed to the likelihood of confusion. There is an inherent problem in trying to test people's unconscious assumptions through questioning, which is partly impacted by the difficulty of replicating the real-world situation faced by consumers in a survey.
As such, businesses should be wary about instructing surveys and the conclusions that they reach.
Expert evidence
With regards to expert evidence, the difficulty lies in finding experts who have relevant expertise – i.e., an expert on likelihood of confusion.
The courts have repeatedly said that an experienced judge will almost certainly have more expertise on that question than any so-called expert. But the Court of Appeal was careful to distinguish these so-called experts from market research experts who can be called to give evidence on the reliability and interpretation of any surveys.
Other types of evidence
Trademark and passing off disputes can be decided either without any evidence at all or with no evidence other than evidence as to the use, distinctive character, and reputation of the trademark in issue. To reach a decision, the court puts itself in the position of the average consumer of the relevant goods or services and then decides the issue.
However, the Court of Appeal confirmed that the fact that evidence is often unnecessary does not mean that any evidence that is available is of no value.
The Court of Appeal indicated that when deciding whether there is likelihood of confusion, evidence of consumer shopping habits is helpful:
“When deciding issues such as likelihood of confusion, it can be of value for the court to receive evidence as to the shopping habits of consumers of the relevant goods or services: for example, as to whether they are in the habit of reading the label on an item before selecting it for purchase or whether they simply rely upon the appearance of the packaging. This is not in itself evidence of confusion, but it may be evidence of circumstances giving rise to a likelihood of confusion… In some circumstances, evidence of this nature can properly be given by means of factual evidence from a witness with experience in the relevant trade.”
Evidence of actual confusion
Often a business will have evidence of actual confusion – for example, mail delivered to the wrong address, online reviews confusing the two businesses, or enquiries from (potential) customers that are directed to the other business. The Court of Appeal recognised that such evidence is likely to be of more value if the relevant witnesses are able to give evidence, as occurred in this case.
It also said, however, that if that is not the case, because the individuals are unavailable or unwilling to give evidence, the court can still consider the evidence and “make what it can of the documentary evidence”. Such evidence is relevant because it may allow the court to gauge the perception of real consumers.
Comment
The Court of Appeal’s confirmation that evidence of the confusion of real consumers is relevant and helpful to the court in assessing the likelihood of confusion is useful for businesses to be aware of when seeking to enforce their own intellectual property rights. While such evidence will not be determinative, businesses should collect any such evidence if an issue arises.
It is also helpful to know that, for trademark and passing off cases, the court will be receptive to hearing evidence about the shopping habits of consumers, such as whether they are in the habit of scrutinising the label or if they rely on the appearance of the packaging. Therefore, it seems that in future cases, experts in behavioural science may be called to give evidence as the court more closely scrutinises consumers’ shopping habits.
If you are interested in enforcing your intellectual property rights to protect your brand, or have any concerns about brand protection, please do not hesitate to contact our intellectual property team or our intellectual property disputes team for advice.