A judge was entitled to grant interim interdict against the Lidl supermarket group selling a brand of gin whose bottling and labelling resembled the registered trade mark for Hendrick's gin, but erred in restricting its scope to Scotland, the Inner House has ruled.

Lord President Carloway, Lord Woolman and Lord Pentland gave the decision on a reclaiming motion by Lidl against an order in favour of William Grant & Sons, who produce and market Hendrick's gin in a dark, "apothecary style" bottle. Lidl previously produced its "Hampstead" gin in a green bottle, but in January 2021 changed the design of the bottle to a darker one similar to the Hendrick's type, and changed the label, alcohol content and price in such a way, Grant alleged, as to mirror the image of Hendrick's gin. 

The intellectual property judge granted interim interdict against Lidl marketing Hampstead gin in Scotland using the new bottle and presentation, finding a prima facie case based on s 10(3) (but not s 10(2)) of the Trade Marks Act 1994, in that there was a link between the two products even if the public would not confuse them and Lidl's use of its sign was taking unfair advantage of, or was detrimental to, the character or repute of the Hendrick's mark.

Lidl reclaimed, averring for the first time that the Hendrick's trade mark specified the protected colours as white or colourless, and not the dark style bottle. Grant amended to refer to a new trade mark relating to a dark coloured bottle. Parties declined a remit to the IP judge to redetermine the case.

Lidl argued that the new mark had not been disclosed to the IP judge and the Inner House ought not to hear matters not canvassed at first instance; that Grant had failed to specify the nature of the injury to its mark; that Grant had not proved that its mark had been used as represented, on a clear or white bottle; and that there were clear and obvious differences between the two products.

Lord Carloway, delivering the opinion of the court, said that at that early stage of the proceedings it was not appropriate to conduct an in-depth analysis of the merits of the case. The IUP judge had correctly applied the law and there was sufficient material to conclude that there was a prima facie case of infringement. The Hendrick's mark depicted a bottle of a particular shape with a coloured label and did not limit itself to a clear bottle. In that case extensive use of a particular colour could result in that colour being associated with the mark in the mind of the public, with the consequence that Lidl's use of the same colour might be seen as taking unfair advantage of the mark. The significance of the new mark might be an issue for the IP judge in due course.

As the interim interdict was the only cogent reason why Lidl had ceased marketing its gin in the dark bottle in Scotland, there remained a reasonable apprehension of it being reintroduced in Scotland.

There was no fault either in the judge's assessment of the balance of convenience. 

On the scope of the interdict, the trade mark regime under the 1994 Act was UK wide, and the courts in Scotland and in England & Wales had equivalent jurisdiction in relation to infringement proceedings. The Scottish courts had jurisdiction over a defender domiciled in Scotland, or where the infringement took place within its jurisdiction. As in England, an order could be granted against activities outside the jurisdiction by a party domiciled within the jurisdiction. Grant could have sued in either jurisdiction and did not need to raise separate actions in each. Its cross appeal would be allowed and the words "in Scotland" deleted from the interim interdict.

Click here to view the opinion of the court.