From “Mother’s ruin” to one of the UK’s most popular spirits, the journey to respectability for gin has been a chequered one.
These days, it would probably be quite difficult to overstate just how popular gin is – from a traditional G&T, to flavoured gins, gin cocktails, gin labs and even make-your-own-gin experiences, the possibilities for the spirit seem endless. Unsurprisingly, supermarkets have also sought to capitalise on demand, by releasing their own brand gins.
Unlike Scotch whisky or champagne, gin does not have the protection of what is known as a geographical indication – geographical indications (or GIs) are a form of intellectual property that are used to certify that a product originates from a particular location and that it possesses certain qualities or characteristics, due to its origin.
Because GIs do not apply to gin, anyone can make it, anywhere in the world.
However, that is not to say that other forms of intellectual property are not relevant, as Lidl recently found out to its detriment.
At the request of the owners of Hendrick’s gin, the Scottish Court of Session has just granted ‘interim interdict’ (which is broadly equivalent to an interim injunction in England) preventing Lidl from selling its Hampstead gin, in a particular bottle.
Hendrick’s claimed that the Hampstead gin bottle (which was redesigned in December 2020) infringed its UK trade mark. That trade mark showed the shape of the Hendrick’s gin bottle (so-called ‘apothecary-style’), with a detailed diamond-shaped label, bearing the name ‘Hendrick’s Gin’ and detailed iconography.
The redesigned Hampstead gin bottle (and Hendricks’ UK mark) can be found in the judgment here.
The claims made were for trade mark infringement and for passing off.
Whilst an interim decision only, pending trial, the Judge found against Hendricks on the passing off allegation and one of the trade mark claims. Broadly speaking, the Judge found that whilst there was “sufficient basis to argue visual and conceptual similarity” between the trade mark and the Hampstead bottle, he did not consider that there was a risk that the buying public would be confused as to the origin of the Hampstead bottle. Put another way, the Judge found that there was no prima facie case to say that a consumer would think that the Hampstead gin was associated with Hendricks – so no prima face case of confusion (for the purposes of trade mark infringement) or misrepresentation (necessary for passing off). Evidence from social media demonstrated that Hendricks was called to mind by consumers but this was not sufficient – crucially, those consumers did not believe that the Hampstead product originated from Hendricks.
However, trade mark infringement can sometimes occur, even if there is no confusion as to origin – where a registered trade mark has a reputation in the UK, infringement can occur through unauthorised use of a sign takes unfair advantage or, is detrimental to, the distinctive character or reputation of that registered trade mark. This ground is set out in section 10(3) of the Trade Marks Act 1994.
There is no need for confusion on the part of the public, although evidence of actual, or a risk of change in, economic behaviour of consumers will need to be adduced.
In finding a prima facie case under this ground of trade mark infringement, the Judge found that there was a reasonable prospect of Hendricks demonstrating that Lidl intended to benefit from the reputation and goodwill of the trade mark and further that there was a risk of harm to the Hendrick’s brand.
This case has a number of similarities with the Colin v Cuthbert litigation that is currently working its way through the English legal system. As set out in our blog, we speculated that Marks and Spencer’s would be relying on section 10(3) of the Trade Marks Act; if we are correct in that assumption, Colin the Caterpillar may well be heartened by this decision.
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