“In Interflora this court explained (at [69]) that a proprietor of a registered trade mark alleging infringement under art.5(2) [the equivalent provision in the Trade Marks Directive] must therefore show that the following requirements are satisfied: (i) the registered trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party in the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor; (v) it must be of a sign which is identical with or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark, or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause.”
“Article 5 requires a comparison of mark for sign. The analysis must therefore begin with the identification of the sign used by Tetrosyl. This was the first area of dispute between the parties. The claimants contended that I should consider the sign to be the shape of the Christmas tree but discounting the words ‘‘CarPlan Air Care’’ which appear in the roundel on the tub. Tetrosyl contended that the sign was the whole tree including the tub and the roundel including the words ‘‘Car-Plan Air Care’’. I have no doubt that Tetrosyl is correct. The matter must be considered from the perspective of the average consumer. The tree is fixed into the tub and the two are presented as a composite whole. Further, the roundel clearly has some trade mark significance. It cannot simply be disregarded as descriptive material which is not part of the sign.”
“In my judgment it is important to distinguish between a defendant who takes a conscious decision to live dangerously and one who intends to cause deception and deliberately seeks to take the benefit of another trader’s goodwill. It has long been established that if it is shown that a defendant has deliberately sought to take the benefit of a claimant’s goodwill for himself the court will not “be astute to say that he cannot succeed in doing that which he is straining every nerve to do” see Slazenger & Sons v Feltham & Co(1889) 6 RPC 130 at p.538 per Lindley LJ”
“it is one thing to live dangerously, in the sense of pushing the boundaries of legitimate creep up on an incumbent. It is another to intend to deceive”
“…the primary function of a mark is unquestionably that of an ‘indication of origin’ (see the seventh recital in the preamble to Regulation No 40/94). The fact remains that a mark also acts as a means of conveying other messages concerning, inter alia, the qualities or particular characteristics of the goods or services which it covers or the images and feelings which it conveys, such as, for example, luxury, lifestyle, exclusivity, adventure, youth. To that effect the mark has an inherent economic value which is independent of and separate from that of the goods and services for which it is registered. The messages in question which are conveyed inter alia by a mark with a reputation or which are associated with it confer on that mark a significant value which deserves protection, particularly because, in most cases, the reputation of a mark is the result of considerable effort and investment on the part of its proprietor.”
“When I first saw it, I immediately thought that the lock up looks very similar to the Lidl brand logo. I assuming you guys are conscious of that?”. ii) In an email dated22 July 2020 from Mr Oliver Swaden, a member of the Communications Insight team, to Mr Marcus Gilbert, a campaign manager, Mr Swaden says he has spoken to an external consultant (Mike at Lumen) who wished to raise some “watch outs” including “Price tiles: The yellow circle inside the blue tile looks a bit like a Lidl ad…”
“The clubcard hanging boards are literally the Lidl logo” (15.9.2020); “I thought this was a Lidl advert based on the colour scheme on the aisle banners” (18.9.2020); and “Looks like she’s zapping a @LidlGB logo from an IPhone - @Tesco”
“As OOH is static with no voiceover, and average viewing of the medium is around 2 seconds, its important that branding is clear”
“Q. You did not think this was a formal guarantee of a price match with Lidl on particular products did you? A. It never verbally says that, no. Q. You did not think that the message from Tesco was that you are guaranteed the same prices on these products as they are found at Lidl? A. You could interpret it that way.”
“Lidl logos on price labels”; “price comparisons with Lidl?”; “The Lidl price comparison”; “There was a Lidl price mark at the bottom”. iii) At this first stage, Option 2 stood out in the ratings. iv) When the labels were shown in isolation (the second stage), the identification of differences increased substantially with 87% and 88% respectively of participants identifying something different in relation to Options 3 and 4. All the options were now identified as doing an effective job of communicating Clubcard Prices. v) When all four labels were shown together (the third stage), Options 1 and 4 were rated higher on nearly all measures than the other two options. vi) This led The Source to advise that, when seen independently, Option 2 performed the best, but that “If Tesco really want customers to notice/call out a different message (one about loyalty and Clubcard) then Option 4 is the way forward”
“Q. You would expect that to be because the press ads use the name Aldi prominently, so people who are not paying great attention will think they are Aldi ads? A. Yes. Q. Your concern about Clubcard Prices is that people will think that this is the Lidl equivalent of an Aldi price match? A. Yes. Q. You worry that when they see the yellow circle and blue square, they will think it indicates a Lidl price match? A. Yes. Q. If they did that, you would expect to see [that] sort of misattribution, would you not? A. Yes. Q. One would see a significant percentage of consumers thinking that the Clubcard Prices ads were ads for Lidl? A. Yes.”
“The Clubcard brand is of fundamental importance to Tesco. As a brand asset, it is unique in all the markets in which Tesco operates. It is one of the crown jewels of Tesco’s goodwill. My principal objective at Tesco was to maximise and develop brand value. It would have been anathema to me, and to Tesco, to allow the Clubcard brand to be muddied or polluted by association with any of Tesco’s competitors. Indeed that would have been contrary to the whole objective of the Master Brand project which was to present customers with clear and consistent Tesco brand messaging.”
“Have you heard about Tesco’s new Lidl price match promise? Us neither” and suggests tweeting a picture of a waving bear “every day until they can Price Match one of our products”. and (ii) a slide on the topic of “Clubcard” illustrating the Mark with Text and the CCP Sign side by side together with text that reads: “Clubcard Looks like Tesco are trying to be a bit like us… The only thing is that our ALOP Always Lidl on Price. prices still beat Tesco for value, even when they discount. Let’s show that initiation is the greatest form of flattery, but saving’s even better”
“For the following question, please take a look at the image below before answering the question that follows. What do you think this image is”
“Next, Mr Brandreth points to the Survey answers, submitting that it is clear from these that the Survey is probative of identification of origin. I agree. The mark with which I am concerned appears to me to be the type of mark that people may well understand as signifying origin. Looking at the answers to the Survey in detail (and taking for these purposes the answers to the first question) one sees numerous responses that say “Lidl”, or “Lidl logo” or “Lidl sign” or even “It looks like the background of Lidl”, or “Part of the Lidl logo without the words” or “Brand image for Lidl supermarket”
“MR. CUDDIGAN: The respondents were not asked to consider their response to that Wordless Mark as a badge of origin for goods? THE WITNESS: They were not. Q. Or as a badge of origin for any services? A. They were not. Q. If they had been, their response may have been very different? A. It might have been even greater. Q. And it might have been much less? A. Potentially. Q. Thank you. You say in your report that a survey should be designed with -- sorry, can I come back to that? It might have been even greater? How could it have been greater? A. I think we had something like 75% said that is Lidl. I think if they had been told from the beginning is there a supermarket brand that you associate this with, I think probably 90% would have said yes, Lidl. Q. That was not the question that was put. The question was put by reference to some products. They are not told ---- A. Totally open, exactly. So totally open they came to Lidl. If you narrowed it down, even more might”
“Revocation of registration. (1) The registration of a trade mark may be revoked on any of the following grounds— (a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use; (b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use…”
“For the purposes of subsection (1) use of a trade mark includes use in a form (the “variant form”) differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (regardless of whether or not the trade mark in the variant form is also registered in the name of the proprietor)…”
“When I see the Tesco advert with all the blue and yellow, all I think of is Lidl”
“12.Section 3(6) of the Trade Marks Act 1994 provides that a trade mark “shall not be registered if or to the extent that the application is made in bad faith”
“15. The provisions on bad faith contained in the Directives and in the Regulations have been interpreted by the Court of Justice of the European Union in four cases: Case Chocoladefabriken Lindt & Sprungli AG v Franz Hauswirth GmbH (C-529/07) EU:C:2009:361, Case Malaysia Dairy Industries Pte Ltd v Ankenaevnet for Patenter og Varemaerker (C-320/12) EU:C:2013:435, Case Koton Magazacilik Tekstil Sanayi ve Ticaret v EUIPO (C-104/18) EU:C:2019:724 andCase Sky plc v SkyKick UK Ltd (C-371/18) EU:C:2020:45 (“Sky CJEU”). There is also a body of case law of the General Court, including Case Psytech International Ltd v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-507/08) EU:T:2011:253, Case pelicantravel.com sro v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (T-136/11) EU:T:2012:689, Case Target Ventures Group Ltd v EUIPO (T-273/19) EU:T:2020:510 and Case Hasbro Inc v European Union Intellectual Property Office (EUIPO) (T-663/19) EU:T:2021:211. All of this case law except for Hasbro is retained EU law, and neither party suggested that this Court should depart from it. As for Hasbro, this constitutes persuasive authority, particularly since it is a decision of an Extended Composition of the Sixth Chamber of the General Court (permission to appeal from which was refused by the CJEU by order dated1 December 2021 [EU:C:2021:983]), and neither party suggested otherwise. 16. In Sky Ltd (formerly Sky Plc) v Skykick UK Ltd[2021] EWCA Civ 1121 (“Sky CA”) Sir Christopher Floyd, with whom Newey and Nugee LJJ agreed, set out at [67] 13 points of principle established by the cases I have listed in paragraph 15 above (with the exceptionof Target Ventures, which was not referred to in Sir Christopher’s judgment and may not have been cited) as follows (so far as relevant for present purposes): “… 2. Bad faith is an autonomous concept of EU trade mark law which must be given a uniform interpretation in the EU: Malaysia Dairy Industries at [29]. 3. The concept of bad faith presupposes the existence of a dishonest state of mind or intention, but dishonesty is to be understood in the context of trade mark law, i.e. the course of trade and having regard to the objectives of the law namely the establishment and functioning of the internal market, contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin: Lindt at [45]; Koton Magazacilik at [45]. 4. The concept of bad faith, so understood, relates to a subjective motivation on the part of the trade mark applicant, namely a dishonest intention or other sinister motive. It involves conduct which departs from accepted standards of ethical behaviour or honest commercial and business practices: Hasbro at [41]. 5. The date for assessment of bad faith is the time of filing the application: Lindt at [35]. 6. It is for the party alleging bad faith to prove it: good faith is presumed until the contrary is proved: Pelikan at [21] and [40]. 7. Where the court or tribunal finds that the objective circumstances of a particular case raise a rebuttable presumption of lack of good faith, it is for the applicant to provide a plausible explanation of the objectives and commercial logic pursued by the application: Hasbro at [42]. 8. Whether the applicant was acting in bad faith must be the subject of an overall assessment, taking into account all the factors relevant to the particular case: Lindt at [37]. 9. For that purpose it is necessary to examine the applicant’s intention at the time the mark was filed, which is a subjective factor which must be determined by reference to the objective circumstances of the particular case: Lindt at [41] - [42]. 10. Even where there exist objective indicia pointing towards bad faith, however, it cannot be excluded that the applicant’s objective was in pursuit of a legitimate objective, such as excluding copyists: Lindt at [49]. 11. Bad faith can be established even in cases where no third party is specifically targeted, if the applicant’s intention was to obtain the mark for purposes other than those falling within the functions of a trade mark: Koton Magazacilik at [46]. 12. It is relevant to consider the extent of the reputation enjoyed by the sign at the time when the application was filed: the extent of that reputation may justify the applicant’s interest in seeking wider legal protection for its sign: Lindt at [51] to [52]. …” 17. Point 3 in this list requires clarification. The reference to Lindt at [45] appears to be a mistake since there is no reference to “dishonesty” in that paragraph or anywhere else in the Court of Justice’s reasoning from [34] to [53]. Furthermore, the Court largely endorsed the reasoning of Advocate General Sharpston in her opinion, and specifically approved what she said in paragraph 58 (and paragraphs 66 and 67). Paragraph 58 forms part of the section of the opinion in which the Advocate General considered whether bad faith depended on subjective intention or purely objective criteria. In paragraph 57 she expressed the view that “in normal usage, the concept of bad faith implies a subjective mental state of a general nature, as outlined in the various descriptions cited byLindt, Hauswirth and the Commission”
“45. While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must moreover be understood in the context of trade mark law, which is that of the course of trade. In that regard, Regulations No 40/94, No 207/2009and No 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market (see, as regards Regulation No 207/2009, judgment of27 June 2013 , Malaysia Dairy Industries (C-320/12) EU:C:2013:435, paragraph 35). The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin. … 46. Consequently, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in the previous paragraph of this judgment.” 19. Although the Court of Justice does not say so in terms in this passage, it is clear from the Court’s reasoning that bad faith is not limited to dishonesty. This is consistent with the analysis of the Advocate General in Lindt and with the judgments of the General Court in Copernicus and Hasbro . 20. Sir Christopher’s point 11 is drawn from what the Court of Justice said in Koton at [46]. The Court repeated this in Sky CJEU at [75]. The Court went on in Sky CJEU to hold at [81], and to rule in the dispositif at [2], that: “Article 51(1)(b) of Regulation No 40/94 … and Article 3(2)(d) of First Directive 89/104 must be interpreted as meaning that a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, within the meaning of those provisions, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.” 21. This confirms that the purpose of this ground of invalidity is twofold: first to prevent bad faith vis-à-vis specific third parties, and secondly to prevent abuse of the trade mark registration system (see also Hasbro at [69]-[72]). As the European trade mark system has evolved over the past three decades, abuses of the system havebecome more prevalent. The bad faith objection provides one of the few ways of combatting such abuses, and therefore it is important that it is not too restrictively interpreted. 22. A vexed question in this field is whether it is sufficient to establish bad faith to prove that the applicant for registration did not intend to use the trade mark in question in relation to the goods or services specified in the application. Having repeated what it had said in Koton, the CJEU answered this question in Sky CJEU as follows (internal citation omitted): “76. Admittedly, the applicant for a trade mark is not required to indicate or even to know precisely, on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of 5 years for beginning actual use consistent with the essential function of that trade mark … 77. However, as the Advocate General observed in point 109 of his Opinion, the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration in the light of the aims referred to in Regulation No 40/94 and First Directive 89/104. Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.” 23. The principles of European law identified by Sir Christopher in his points 6 and 7 are consistent with earlier domestic jurisprudence. So far as point 6 is concerned, the following statement of principle in Walton International Ltd v Verweij Fashion BV[2018] EWHC 1608 (Ch) ; [2018] R.P.C. 19 at [186(i)] is of particular relevance to the present case: “A person is presumed to have acted in good faith unless the contrary is proved. An allegation of bad faith is a serious allegation which must be distinctly [pleaded and] proved. The standard of proof is the balance of probabilities, but cogent evidence is required due to the seriousness of the allegation. It is not enough to prove facts which are also consistent with good faith.”
“42. It is for the applicant for a declaration of invalidity who intends to rely on Article 52(1)(b) of Regulation No 207/2009 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise …. 43. Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark. 44. The proprietor of the trade mark at issue is best placed to provide EUIPO with information regarding his or her intentions at the time of applying for registration of that mark and to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances, those intentions were legitimate ….” . “45. While, in accordance with its usual meaning in everyday language, the concept of ‘bad faith’ presupposes the presence of a dishonest state of mind or intention, that concept must moreover be understood in the context of trade mark law, which is that of the course of trade. In that regard, Regulations No 40/94, No 207/2009and No 2017/1001, which were adopted successively, have the same objective, namely the establishment and functioning of the internal market (see, as regards Regulation No 207/2009, judgment of27 June 2013 , Malaysia Dairy Industries (C-320/12) EU:C:2013:435, paragraph 35). The rules on the EU trade mark are aimed, in particular, at contributing to the system of undistorted competition in the Union, in which each undertaking must, in order to attract and retain customers by the quality of its goods or services, be able to have registered as trade marks signs which enable the consumer, without any possibility of confusion, to distinguish those goods or services from others which have a different origin. … 46. Consequently, the absolute ground for invalidity referred to in Article 52(1)(b) of Regulation No 207/2009 applies where it is apparent from relevant and consistent indicia that the proprietor of an EU trade mark has filed the application for registration of that mark not with the aim of engaging fairly in competition but with the intention of undermining, in a manner inconsistent with honest practices, the interests of third parties, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin recalled in the previous paragraph of this judgment.” “Article 51(1)(b) of Regulation No 40/94 … and Article 3(2)(d) of First Directive 89/104 must be interpreted as meaning that a trade mark application made without any intention to use the trade mark in relation to the goods and services covered by the registration constitutes bad faith, within the meaning of those provisions, if the applicant for registration of that mark had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.” “76. Admittedly, the applicant for a trade mark is not required to indicate or even to know precisely, on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of 5 years for beginning actual use consistent with the essential function of that trade mark … 77. However, as the Advocate General observed in point 109 of his Opinion, the registration of a trade mark by an applicant without any intention to use it in relation to the goods and services covered by that registration may constitute bad faith, where there is no rationale for the application for registration in the light of the aims referred to in Regulation No 40/94 and First Directive 89/104. Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark.” “A person is presumed to have acted in good faith unless the contrary is proved. An allegation of bad faith is a serious allegation which must be distinctly [pleaded and] proved. The standard of proof is the balance of probabilities, but cogent evidence is required due to the seriousness of the allegation. It is not enough to prove facts which are also consistent with good faith.” “42. It is for the applicant for a declaration of invalidity who intends to rely on Article 52(1)(b) of Regulation No 207/2009 to prove the circumstances which make it possible to conclude that an application for registration of an EU trade mark was filed in bad faith, the good faith of the trade mark applicant being presumed until proven otherwise …. 43. Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark. 44. The proprietor of the trade mark at issue is best placed to provide EUIPO with information regarding his or her intentions at the time of applying for registration of that mark and to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances, those intentions were legitimate ….”
“I agree with the judge at [96] that the question on a strike out application such as this is whether the statement of case pleads sufficient objective indicia to give rise to a real prospect of the presumption of good faith being overcome so as to shift the evidential burden to the applicant for registration to explain its intentions. In my view Tesco’s pleading does so.”
“The proprietor of the trade mark at issue is best placed to provide EUIPO with information regarding his or her intentions at the time of applying for registration of that mark and to provide it with evidence capable of convincing it that, in spite of the existence of objective circumstances, those intentions were legitimate…”
“49 Contrary to the submission of counsel for Lidl, the inference cannot be disproved merely by the counter-assertion that Lidl were entitled to obtain a wider scope of protection than that conferred by registrations of the Mark with Text. Whether obtaining that wider scope of protection was legitimate requires a factual investigation, in particular as to the extent of the reputation and goodwill which attached to the Mark with Text in 1995 and as to whether the average consumer in 1995 would have perceived the Wordless Mark as designating the origin of Lidl’s goods and/or services. See Sir Christopher’s point 12 [in Sky CA] 50 …it is clear that for an applicant to seek unjustifiably broad protection may amount to an abuse of the trade mark system which constitutes bad faith. Whether it does constitute bad faith is at least to some extent a fact sensitive question which depends in large part on the applicant’s intentions…”
“it is for the applicant to provide a plausible explanation of the objectives and commercial logic pursued by the application”
“First, [a claimant] must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying 'get-up' (whether it consists simply of a brand name or trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, [a claimant] must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods and services of the [claimant]. Whether the public is aware of the [claimant’s] identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the [claimant]. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is a little or no public awareness of the identity of the proprietor of the brand name. Thirdly, [the claimant] must demonstrate that he suffers, or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the [claimant].”
“There is passing off even if most of the people are not fooled most of the time but enough are for enough of the time. By “enough”
“The judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall ‘jury’ assessment involving a combination of all these factors, see ‘GE’ Trade Mark [1973] R.P.C. 297 at page 321. Ultimately the question is one for the court, not for the witnesses. It follows that if the judge’s own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the judge is supplemented by such evidence then it will succeed. And even if one’s own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. The Jif lemon case (Reckitt & Colman Products Ltd. v. Borden Inc. [1990] R.P.C. 341) is a recent example where overwhelming evidence of deception had that effect. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more ‘it depends on the evidence’”. (v) It is not sufficient for a claimant to prove that the public recognises a particular attribute and associates it with the claimant – mere recognition is not enough, the relevant public needs to perceive the attribute as a badge of origin ([170]-[173]). (vi) Passing off is not confined to misrepresentation as to trade origin, and may extend to misrepresentation as to equivalence ([174]-[181]). (vii) However, as Arnold LJ said at [181]: “In the light of these authorities, counsel for the Defendants did not dispute that, in principle, a misrepresentation as to equivalence could be actionable as passing off, but submitted that it was necessary to consider with care what goodwill the claimant owned and whether any misrepresentation was made by the indicia complained of which was likely to damage the claimant's goodwill. I accept that submission.” (viii) It is not a necessary ingredient of passing off that the misrepresentation was deliberate. While the intentions of the defendant may have evidential relevance, the misrepresentation may be an innocent one ([182]-[183]). Thus as Lord Simonds said in Office Cleaning Services Ltd v Westminster Window and General Cleaners Ltd(1946) 63 RPC 39 at page 42 “…if the intention to deceive is found, it will readily be inferred that deception will result. Who knows better than the trader the mysteries of his trade?” ([185]). It is likely to be important to distinguish between a conscious decision to live dangerously and one who intends to cause deception and deliberately seeks to take the benefit of another trader’s goodwill ([187]-[188]). “The judge must consider the evidence adduced and use his own common sense and his own opinion as to the likelihood of deception. It is an overall ‘jury’ assessment involving a combination of all these factors, see ‘GE’ Trade Mark [1973] R.P.C. 297 at page 321. Ultimately the question is one for the court, not for the witnesses. It follows that if the judge’s own opinion is that the case is marginal, one where he cannot be sure whether there is a likelihood of sufficient deception, the case will fail in the absence of enough evidence of the likelihood of deception. But if that opinion of the judge is supplemented by such evidence then it will succeed. And even if one’s own opinion is that deception is unlikely though possible, convincing evidence of deception will carry the day. The Jif lemon case (Reckitt & Colman Products Ltd. v. Borden Inc. [1990] R.P.C. 341) is a recent example where overwhelming evidence of deception had that effect. It was certainly my experience in practice that my own view as to the likelihood of deception was not always reliable. As I grew more experienced I said more and more ‘it depends on the evidence’”. “In the light of these authorities, counsel for the Defendants did not dispute that, in principle, a misrepresentation as to equivalence could be actionable as passing off, but submitted that it was necessary to consider with care what goodwill the claimant owned and whether any misrepresentation was made by the indicia complained of which was likely to damage the claimant's goodwill. I accept that submission.”
“First, in most cases…the central question is whether there is a misrepresentation…this is the critical element of the tort. A finding of misrepresentation, or its absence, informs but is not conclusive of the other two requirements of the tort. If there is a misrepresentation it is often likely that it is because the claimant has developed sufficient goodwill. So the presence of misrepresentation is itself a test of goodwill.”
“29. The concept of “work”…[f]irst…entails that there exist an original subject matter, in the sense of being the author’s own intellectual creation. Second, classification as a work is reserved to the elements that are the expression of such creation… 30. As regards the first of those conditions…if a subject matter is to be capable of being regarded as original, it is both necessary and sufficient that the subject matter reflects the personality of its author, as an expression of his free and creative choices… 31. On the other hand, when the realisation of the subject matter has been dictated by technical considerations, rules or other constraints, which have left no room for creative freedom, that subject matter cannot be regarded as possessing the originality required for it to constitute a work…”
“A wrong result can easily be reached if one begins by dissecting the plaintiffs’ work and asking, could section A be the subject of copyright if it stood by itself, could section B be protected if it stood by itself, and so on. To my mind, it does not follow that, because the fragments taken separately would not be copyright, therefore the whole cannot be. Indeed, it has often been recognised that if sufficient skill and judgment have been exercised in devising the arrangements of the whole work, that can be an important or even decisive element in deciding whether the work as a whole is protected by copyright.”
“14. …when considering whether a ‘substantial part’ of a copyright work has been taken for the purposes of section 16(3) CDPA 88, what matters is the extent to which that part contains elements which express the intellectual creation of the author. If it contains elements which express the intellectual creation of the author, then it is a substantial part. If it does not, it is not. 15. It is common ground that an essential part of proving copying is an unbroken causal connection between the original work and the infringing copy. That causal connection can be either direct or indirect pursuant to section 16(3)(b) CDPA 88. A prima facie case of copying may arise if there is substantial similarity and proof of access to the original work by the alleged infringers. In the leading authority Designers Guild v Russell Williams Textiles[2000] 1 WLR 2416 at 2425, Lord Millet expressed the court’s task as follows: ‘The first step in an action for infringement of artistic copyright is to identify those features of the defendant’s design which the plaintiff alleges have been copied from the copyright work. The court undertakes a visual comparison of the two designs, noting the similarities and differences. The purpose of the examination is not to see whether the overall appearance of the two designs is similar, but to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than coincidence. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal or consist of general ideas. If the plaintiff demonstrates sufficient similarity, not in the works as a whole but in the features which he alleges have been copied, and establishes that the defendant had prior access to the copyright work, the burden passes to the defendant to satisfy the judge that, despite the similarities, they did not result from copying. Even at this stage, therefore, the inquiry is directed to the similarities rather than the differences. This is not to say that the differences are unimportant. They may indicate an independent source and so rebut any inference of copying.”
“Here the only evidence of actual copying, direct or indirect, is similarity with regard to the figure, which is a substantial part of the sketch, between the copyright work and the alleged infringement. I think, however, that, where there is substantial similarity, that similarity is prima facie evidence of copying which the party charged may refute by evidence that, notwithstanding the similarity, there was no copying but independent creation.”
“Speaking entirely generally, it seems to me that the more strikingly similar two works may be, the more likely the proposition may seem that there has been copying, and that will mean that one may expect even more cogent evidence to rebut such a case than one might expect in a different case in which the similarities are less striking. It can only ever be a matter for weighing up the evidence.”
“At no point during the design process of the Clubcard signifier did I have, nor as far as I am aware did any of my team have, any intention to copy the Lidl logo. Nor was any such idea suggested to the design agency, Sherlock.”
“Q. Now let us go through those paragraphs in the order that you discuss them in your statement. The first one of those is at paragraph 36…You say it…"One ultimately aborted project was a potential price-cut message, and we produced a number of potential designs for use with such a message." So we understand from this that it is something your team is doing, and these are designs that you produced in that time; yes? A. Yes. When we see "My team", my team in combination with our agency partners. Q. I am sorry, where does it say that? Is that part of the clarification you are now giving the court? Should it read, "In parallel to the Clubcard Prices signifier, but unrelated to it, my team and other external bodies I have not named were working on several value related products at the same time"? Is that what it should say? A. Yes, possibly. Q. Not yes possibly, what is your evidence? What do you tell the court? This is what you recall you told me. What do you recall? A. We work in partnership with agencies on this type of design work. … MRS. JUSTICE JOANNA SMITH: Mr. Threadkell, whenever you refer to "my team" in your statement, should I read that as including your external partners, or is it not as simple as that? A. It is not exclusively, but the creation of designs will predominantly be through external partners”
“Should yellow be used for the value elements (ie value tile mechanic? As that is in the guidelines – please explore blue and yellow options”. viii) Mr Threadkell asked his team to speak to Sherlock and provide them with information including asking them to consider the use of blue and yellow, whether alone or in combination. The incumbent Clubcard marketing agency, Havas Helia, was also asked to consider possible designs. However, Mr Threadkell did not consider the resulting proposals from either external designer to be useful. ix) On7 June 2019 , Tesco provided a briefing to Wolff Olins in the form of a power point presentation entitled simply “Value”
“Q….You want to understand what the associations are, you want to measure how they work, and that is going to inform your design approach. That is what Wolff Olins is being told, right? A. Yes.”