When is a knock-off not a knock off: Hendrick’s v Lidl

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Hendrick’s V Lidl 

Copy-cat products seem to be part of life and business. A hot product of the season is released by a seller one day and similar versions are in all the stores the next. I’ve seem multi-level-marketing companies actively advertise that their products are cheaper, replica versions of the big name product. Where’s the line between on-trend and knock off? Discount stores have created a grey-area in which apparent replicas might seem to exist without challenge.

Then Colin took on Cuthbert. Now Hendrick’s are suing Lidl. Lidl sells a gin, Hampstead, that Henrick’s think is too familiar…

The Hendrick’s/Lidl case has only gone as far as an interim interdict. This is a temporary decision on whether Lidl can continue to sell Hamstead gin while the court makes a decision on whether or not Lidl are in the wrong. At the end of July, an appeal extended the temporary ban on Lidl selling Hampstead Gin was extended from Scotland to all of the UK.

Grounds to the claim

Hendrick’s had three grounds to their claims:

  1. trademark infringement
  2. passing off and
  3. unfair advantage.

At this stage, they didn’t succeed in showing that Hampstead Gin is similar enough to be confused with Hendrick’s (trademark infringement) nor had Lidl succeeded in actually passing Hampstead Gin off as produced by Hendrick’s to consumers (passing off). The court noted that the prices were different, Hampstead was only available at Lidl and other subtle differences meant that customers knew they weren’t buying Hendrick’s. This is only the first stage and the court looking at the merits of the case may determine otherwise once more evidence is submitted by Hendrick’s.

Evidence 

A YouTube video was used as evidence. In it, people were asked to comment on a bottle of Hampstead gin. People commented on the similarity between the two gins, explicitly naming Hendrick’s in their comparison. People went so far as to say, “Fake copy of Hendrick’s,” and “Looks like a complete rip off of Hendrick’s!” But that didn’t help Hendrick’s in court. The consumers all spotted that it was a fake. They didn’t think it was a different product line or a rebrand of Hendrick’s. Even though the court acknowledged that Lidl had almost certainly changed the packaging to be more similar to Hendrick’s, they didn’t see a case for trademark infringement or passing off.

Does that mean that so as long as the name, price and retailer are all different, there’s no problem with copycat products? Not exactly.

Unfair Advantage 

Lidl were still told to stop selling Hampstead gin for now because of the third allegation of Hendrick’s: unfair advantage. Unfair advantage is where one brand gets a free ride on the marketing and reputation of another, established brand. The YouTube video showed that consumers saw the Hampstead bottle and associated with Hendrick’s. While that association wasn’t enough to sustain a trademark infringement claim, it was enough for the court to see a potential case of foul-play. If consumers thought of Hendrick’s when they held the Hampstead bottle, they’d be more likely to buy it even though they it wasn’t Hendrick’s.

That the same consumer research meant the failure of one claim and establishment of another in this case shows how complicated protecting you intellectual property can be. The court noted that at the final hearing, Hendrick’s may even struggle to establish a case of unfair advantage, but they’d give them protection in the interim.

If your designs or products are being copied, you need to act quickly and take advice on your rights. Hendrick’s acted quickly to protect what was theirs and this was part of the reason why the court granted the interim ban.

But the lesson here, for now, seems to be: When is a knock-off not a knock-off? When it’s clearly a knock-off.

If you would like further information on the topic discussed in this blog, please contact Lottie White by email: lwhite@gilsongray.co.uk or by phone: 0141 530 2038, Derek Hamill by email: dhamill@gilsongray.co.uk or by phone: 0141 530 2022 / 07973 924 333.

The information and opinions contained in this blog are for information only. They are not intended to constitute advice and should not be relied upon or considered as a replacement for advice. Before acting on any of the information contained in this blog, please seek specific advice from Gilson Gray.

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