Hugo Cuddigan KC

Lidl v Tesco [2024] EWCA Civ 262

The Court of Appeal has just handed down its much anticipated judgment in Lidl v Tesco. This was an appeal from the decisions of Mrs Justice Joanna Smith in [2023] EWHC 873 (Ch) (liability) and [2023] EWHC 1517 (Ch) (fo...

The Court of Appeal has just handed down its much anticipated judgment in Lidl v Tesco. This was an appeal from the decisions of Mrs Justice Joanna Smith in [2023] EWHC 873 (Ch) (liability) and [2023] EWHC 1517 (Ch) (form of order), concerning the use by Tesco of the blue and yellow Clubcard sign and Lidl’s earlier rights in the Lidl logo. At first instance, Lidl succeeded in its claim for trade mark infringement, passing off and copyright infringement, however several of its Wordless Mark Registrations were invalidated on the ground of bad faith. The Judge also held that Lidl should be granted an injunction to restrain copyright infringement in any event.

The appeal was heard by Lewison, Arnold and Birss LLJ, and focused primarily on Lidl’s contention that the Clubcard signs conveyed the message of price matching with Lidl. Arnold LJ gave the main judgment, in which he dismissed Tesco’s appeal against the findings of trade mark infringement and dismissed Lidl’s appeal against the Judge’s finding of bad faith. The Court allowed Tesco’s appeal on the issue of copyright infringement. Birss LJ gave a short judgment in which he adopted a different analysis on detriment for the purposes of s.10(3), and in particular reinforced the proposition that a case of infringement for detriment to distinctive character cannot be made out solely on the basis of a “pure dilution” argument.

The judgment contains a useful summary of the applicable law in relation to all causes of action. Further, Arnold LJ engaged in a detailed consideration of the role and proper assessment of different types of evidence in trade mark and passing off cases. The judgment raised several interesting points:

surveys carried out prior to litigation and for non-litigious purposes can be relied on without the permission of the court and even if they are not statistically significant;
a judge is entitled to rely on evidence given by real consumers insofar as they assist the court in ascertaining the perception of the average consumer;
the judge is entitled to rely on evidence the admissibility of which is not objected to by the other side;
it is reasonable to infer, in the absence of an alternative explanation, that a price-matching perception was due to the similarity of the respective signs, despite this not being expressly stated by the evidence;
Arnold LJ agreed with the proposition that innocent adoption of the sign complained of is not, in and of itself, sufficient for a finding of due cause – something more is needed;
it was confirmed that, where objective circumstances give rise to a prima facie case of bad faith, the evidential burden shifts to the applicant to explain its intentions at the time of making the application. This is a legitimate approach regardless of the length of time passed since the application was made; and
the case of Ladbroke v William Hill was held not to be relevant to the question of whether a derivative work is original over an antecedent work.

Lastly, Lewison LJ expressed his view that there cannot be a finding of due cause under s.10(3) where the judge finds that the defendant’s sign took unfair advantage of a registered trade mark. However, the issue thus remains to be clarified by the courts at a later date.

Finally, the Court emphasised the importance of restricting appeals to a review of first instance decisions.

Benet Brandreth KC and Edward Cronan appeared for Lidl, instructed by Bird & Bird. Iain Purvis KC and Hugo Cuddigan KC appeared for Tesco, instructed by Haseltine Lake Kempner LLP.

[2024] EWCA Civ 262

NOCO v Shenzhen Carku [2023] EWCA Civ 1502

NOCO owned GB 2 257 858 (the “Patent”), concerning battery-powered car jump starters. Carku revoked the Patent on grounds of obviousness. Carku also alleged that statements made by NOCO to Amazon were actionable threats...

Tesco v Lidl [2023] EWHC 873 (Ch)

Lidl brought trade mark infringement, passing off and copyright infringement claims against Tesco. The complaint concerned Tesco’s blue and yellow Clubcard Prices symbol, which was said to infringe Lidl’s logo. Tesco cou...

Anan Kasei and Rhodia v Neo [2023] EWCA Civ 11

Neo had infringed the Claimants’ patent by dealing with high surface area (‘HSA’) ceric oxide products in the UK. Those products are used (in combination with a number of other ingredients) in the manufacture of exhaust...

Shenzhen Carku v NOCO [2022] EWHC 2034 (Pat)

NOCO owns GB 2 257 858 (the “Patent”), which concerns battery-powered car jump starters. Carku sought revocation of the Patent on grounds of obviousness over three prior art citations: Richardson, Krieger and a manual fo...

CommScope v SOLiD Technologies [2022] EWHC 769 (Pat)

This was a patent infringement action relating to digital antenna systems (“DAS”). The patent was for a digital DAS, in which the internal handling of the analogue RF signals is digitised. The judge, Mellor J, criticised...

Anan Kasei v Neo [2022] EWHC 708 (Ch)

An inquiry into damages was ordered following the finding of infringement by Neo of Rhodia’s patent for high surface area (“HSA”) cerium oxide, a product used in the manufacture of catalyst systems for vehicle exhausts. ...

Lufthansa Technik AG v Astronics Advanced Electronic Systems & others [2022] EWCA Civ 20

The appeal concerned Lufthansa’s patent for an aircraft passenger in-seat power supply system. The three defendants Astronics, Panasonic and Safran, were responsible for manufacturing such systems, supplying them, and i...

Promptu v Sky [2021] EWHC 2021 (Pat)

In these proceedings the claimant (Promptu) alleged infringement of EP(UK) 1,290,889 (“the Patent”) by the defendants (“Sky”). The Patent is concerned with the voice control of television set-top boxes, and Promptu alleg...

Bentley Motors Limited v (1) Bentley 1962 Limited (2) Brandlogic Limited [2020] EWCA Civ 1726

This was an appeal from the decision of Hacon HHJ in [2019] EWHC 2925 (Ch) where it was held that the well-known luxury car manufacturer Bentley Motors had infringed Bentley Clothing’s trade marks for the word BENTLEY fo...

This was an appeal from the decision of Hacon HHJ in [2019] EWHC 2925 (Ch) where it was held that the well-known luxury car manufacturer Bentley Motors had infringed Bentley Clothing’s trade marks for the word BENTLEY for clothing (the so-called Word Mark and Series Mark) under both ss.10(1) and 10(2) of the Trade Marks Act 1994 (the “Act”). Hacon HHJ had held that Bentley Motors were not entitled to a defence of honest concurrent user and the defence under the transitional provisions of the Act was narrow and limited only to Bentley Motors’ use prior to the coming into force of the Act on 31 October 1994.

Bentley Motors was granted permission to appeal Hacon HHJ’s findings under ss.10(1) and 10(2) and the transitional provisions (which Bentley Motors put on a wider basis on appeal than at trial). Permission to appeal Hacon HHJ’s decision on honest concurrent use was refused.

The appeal was dismissed.

Before the Court of Appeal, Bentley Motors contended on s.10(1) that Hacon HHJ had failed to consider condition (vi) for infringement, being that the trade mark use must affect, or be liable to affect, one of the functions of the trade mark. The Court of Appeal rejected this argument and agreed with Bentley Clothing that the issue of condition (vi) had never been raised by Bentley Motors at trial (other than in the context of honest concurrent use). Given the Hacon HHJ had rejected Bentley Motors’ case on honest concurrent use and permission to appeal had been refused, it was not open to Bentley Motors to contend that condition (vi) was not satisfied for some other reason. Hacon HHJ was correct to find Bentley Motors had infringed the Word Mark and the Series Mark under s.10(1).

It was therefore not necessary for the Court of Appeal to consider s.10(2).

On the transitional provisions, the Court of Appeal held there was no basis to interfere with Hacon HHJ’s formulation of the defence.

Hugo Cuddigan QC and Mitchell Beebe acted for the Claimants, instructed by Fox Williams LLP

[2020] EWCA Civ 1726

Amgen v Sanofi [2020] EWHC 2818 (Pat)

This hearing involved an application by the defendants to lift a stay of proceedings that had been agreed between the parties in what the judge called a “quasi-Tomlin order”. The stay been agreed pending a decision of t...

Freddy SPA v Hugz Clothing and ors [2020] EWHC 3032 (IPEC)

This was the trial of claims for patent infringement, unregistered design right infringement, breach of contract and passing off. The rights in issue related to shapewear jeans. Following earlier allegations of infringem...

Lufthansa Technik AG v Astronics Advanced Electronic Systems & others [2020] EWHC 1968 (Pat)

Lufthansa was the owner of a patent for an aircraft passenger in-seat power supply system. Astronics manufactured such systems, Safran installed them into airline seats, and Panasonic supplied in-flight entertainment sy...

Technetix BV et al v Teleste Limited [2019] EWHC 3106 (Pat)

Technetix alleged infringement of UK Patent No. EP (UK) No. 1 259 074 B8 entitled ‘Communication system comprising means for preventing intermodulation products’ by Teleste’s supply of telecommunications products to Virg...

Bentley 1962 Ltd & Anor v Bentley Motors Ltd [2019] EWHC 2925 (Ch)

This was a claim of trade mark infringement under ss.10(1) and 10(2) of the Trade Marks Act 1994 against the well-known luxury car manufacturer Bentley Motors Limited. The Claimants, Bentley 1962 Limited and Brandlogic L...

This was a claim of trade mark infringement under ss.10(1) and 10(2) of the Trade Marks Act 1994 against the well-known luxury car manufacturer Bentley Motors Limited. The Claimants, Bentley 1962 Limited and Brandlogic Limited (together, “Bentley Clothing”), were respectively, a family firm who sold clothing under the brand ‘Bentley’ and the owner of three registered UK Trade Marks containing the word BENTLEY. Bentley Motors had used the word BENTLEY on clothing both alone and in combination with the ‘B in Wings’ device (referred to as the “Combination Sign”).

Bentley Clothing succeeded under both ss.10(1) and 10(2).

In relation to s.10(1), Bentley Clothing’s case was that use of the Combination Sign was use of two separate marks – the word BENTLEY and the ‘B in Wings’. This was put on two grounds. First, Bentley Motors was estopped from saying the Combination Sign was one mark given a prior decision involving the parties in the UKIPO, and second, the average consumer would treat it as two marks. While there was no estoppel, Hacon HHJ held that the Combination Sign was two marks and its use in relation to clothing was infringement of Bentley Clothing’s word marks for BENTLEY. Had there been no infringement under s.10(1), it was held that there would have been infringement under s.10(2).

Hacon HHJ then considered Bentley Motors’ defences. The first concerned the transitional provisions under the Trade Marks Act 1994. Due to some clothing sales prior to 1994, Bentley Motors was permitted to use the word BENTLEY to a limited extent on advertising literature for the sale of jackets, silk ties, caps and scarves but not on the goods themselves or on tags or other materials attached to the goods. The second defence was honest concurrent use. Since 1998, Bentley Motors had been on notice as to Bentley Clothing’s business and trade marks. It had adopted a policy of ‘grandmother’s footsteps’, involving a conscious decision to adopt use of the word BENTLEY in incremental stages to avoid triggering a response from Bentley Clothing. This conduct did not constitute honest concurrent use. This defence was rejected.

Hugo Cuddigan QC and Mitchell Beebe acted for the Claimants, instructed by Fox Williams LLP

[2019] EWHC 2925 (Ch)

Prosyscor Ltd v Netsweeper Inc & Ors [2019] EWHC 1302 (IPEC)

Prosyscor claimed to be entitled to an international patent application and national and regional applications derived from it. The invention claimed was a method of discriminating between requests to access a website s...

Garmin (Europe) Ltd v Koninklijke Philips N.V. [2019] EWHC 107 (Ch)

Claim for infringement of an early patent covering GPS fitness trackers. Philips argued that the patent had been ‘art-changing’ in 1998 (cf Schlumberger), raising hotly contested issues as to the identity of the skilled...

Pulseon OY v Garmin (Europe) Ltd [2019] EWCA Civ 138

This case concerned a claim by PulseOn for infringement of two registered Community Designs relating to wearable heart rate monitors. These monitors used photoplethysmography, a technology that involved transmitting lig...

Rotam Agrochemical Company Ltd & Anor v GAT Microencapsulation GMBH [2018] EWHC 2765

This trial in the Commercial Court concerned an attempted collaboration in relation to the production of a capsule suspension formulation for Clomazone, a plant protection product. Rotam alleged that GAT had breached tw...

Bose Corporation v Freebit AS [2018] EWHC 889 (Pat)

In this action Bose’s in-ear headphones and StayHear eartips were alleged to infringe a patent owned by Freebit. The patent is for an ear unit with a shape allowing it to fit comfortably and stably in the outer ear. Bo...

Scomadi Ltd & Anor v RA Engineering Co. Ltd & Ors [2017] EWHC 2658 (IPEC)

Hanway (an additional counterclaimant) agreed with Scomadi (the claimants) to manufacture Lambretta-style scooters. Hanway’s involvement in the design of those scooters turned out to be greater than had been anticipated...

Jushi Group Co Ltd v OCV Intellectual Capital LLC [2017] EWHC 171 (IPEC)

IPEC trial concerning the validity of a patent claiming a range of glass compositions for use in the making of glass fibre. The claimant alleged that the patent was anticipated by and/or obvious over an earlier US patent...

Property Renaissance Ltd (t/a Titanic Spa) v Stanley Dock Hotel Ltd (t/a Titanic Hotel) [2016] EWHC 3103 (Ch)

This was a trade mark and passing off case concerning the right to use the name “Titanic”. Titanic Spa commenced proceedings against the Titanic Hotel for trade mark infringement and passing off, relying upon its “Titani...

Meter-Tech Llc & Anor v British Gas Trading Ltd [2016] EWHC 2278

Meter-Tech was the exclusive licensee of a patent for a prepayment utility metering system. The patent concerned the method by which a remote, electronic, energy prepayment, can be routed to a particular prepayment util...

Design & Display Ltd v Ooo Abbott & Anor [2016] EWCA Civ 95

This was an appeal of a decision in an account of profits following a successful claim for infringement of a patent for a display panel used in shops made up of ’slatted panel’ and ’snap-in' aluminium inserts. At the ac...

AP Racing Ltd v Alcon Components Ltd [2016] EWHC 116 (IPEC)

This was a damages inquiry following the successful infringement action relating to a patent for disk brake calipers used in high performance motor vehicles. Hugo Cuddigan acted for the patentee. The defendant had sough...

The Big Bus Company Ltd v Ticketogo Ltd [2015] EWHC 1094 (Pat)

This was an application by Big Bus, an operator of open top bus sightseeing tours, for pre-action disclosure against a patentee, Ticketogo under CPR 31.16. The disclosure sought was comprised of patent licences previous...

G-Star Raw CV v Rhodi Ltd & ors [2015] EWHC 216 (Ch)

This was an action for infringement of unregistered UK design right. The claimant was the well-known fashion brand, G-Star. The defendants were responsible for the ‘Voi’ brand of jeans and casual clothing. The case re...

Rihanna & ors v Topshop & ors [2015] EWCA Civ 3

This was the trial and subsequent appeal of a complaint made by the world famous singer, Rihanna, that Topshop had infringed her rights by selling a t-shirt with her image on it and that this constituted an act of passin...

Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2014] EWCA Civ 1462

This was an appeal in a patent infringement action brought by ASSIA, a US corporation specialising in ADSL broadband technology, against BT in relation to the Dynamic Line Management System which controls their broadband...

Weatherford Global Products v Hydropath Holdings Ltd & ors [2014] EWHC 2725 (TCC)

A breach of contract claim brought by Weatherford in respect of electronic fluid conditioners for use in the oil and gas industry against the supplier of the devices, Hydropath. Weatherford alleged that the devices brea...

AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40

This was a case about a patent for disk brake calipers used in high performance motor vehicles. Hugo Cuddigan acted for the successful appellant and patentee, AP Racing. The patent had been held invalid at first instan...

Cayman Music (Bob Marley) v Blue Mountain [2014] EWHC 1690 (Ch)

High Court trial in relation to the Copyright in Bob Marley's song "No Woman No Cry" as well as other musical works. There was also a claim for an account of sums mistakenly had and received by the Defendant from copyrig...

PulseOn OY v Garmin (Europe) Limited [2018] EWHC 47 (Ch)

In this case PulseOn sued Garmin for infringement of both unregistered UK design right and registered community design. The claim related to the use of photoplethysmography in wearable heart rate monitors. Garmin was...

Football Dataco v Sportradar [2013] EWCA Civ 27

Copyright and sui generis database right relating to live football data. High Court and Court of Appeal. Football Dataco v Sportradar [2013] EWCA Civ 27...

Dyson v Vax [2011] EWCA Civ 1206

Registered design regarding vacuum cleaners. Patents Court and Court of Appeal. Dyson v Vax [2011] EWCA Civ 1206...

Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819

Patent revocation; controlled source electromagnetic sub-surface hydrocarbon surveying; common general knowledge; inventive step; novelty; skilled persons. High Court and Court of Appeal. Schlumberger Holdings Ltd v E...

Fisher v Brooker [2009] UKHL 41

Copyright ownership ; lapse of time for claim ; “A Whiter Shade of Pale”. House of Lords. Fisher v Brooker [2009] UKHL 41...

Hugo Cuddigan KC

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