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You are here: BAILII >> Databases >> Scottish Court of Session Decisions >> WILLIAM GRANT & SONS IRISH BRANDS LTD AGAINST LIDL STIFTUNG & CO KG AND OTHERS [2021] ScotCS CSOH_55 (25 May 2021)
URL: http://www.bailii.org/scot/cases/ScotCS/2021/2021_CSOH_55.html
Cite as: [2021] CSOH 55, 2021 SLT 767, 2021 GWD 18-258, [2021] ScotCS CSOH_55

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OUTER HOUSE, COURT OF SESSION
[2021] CSOH 55
A74/21
OPINION OF LORD CLARK
In the cause
WILLIAM GRANT & SONS IRISH BRANDS LIMITED
Pursuer
against
(FIRST) LIDL STIFTUNG & CO KG; (SECOND) LIDL UK GMBH and
(THIRD) LIDL GREAT BRITAIN LIMITED
Defenders
Pursuer: Dean of Faculty; Tariq: Burness Paull LLP
Defenders: Lord Keen of Elie; Campbell; Harper Macleod LLP
25 May 2021
Introduction
[1]
The pursuer is the owner of the "Hendrick's gin" brand. A product named
"Hampstead gin" is sold in Lidl stores in Scotland. The pursuer claims that the defenders
are infringing the pursuer's trade mark and are also committing the delict of passing-off.
The defenders deny these claims. The pursuer seeks orders for interim interdict.
2
Background
[2]
Hendrick's gin was launched in 2000. The pursuer is the registered owner of UK
trade mark No: UK00910544575, which became effective from 6 January 2012. The mark
shows the shape of the Hendrick's gin bottle, bearing a diamond-shaped label. It is
registered in class 33 for alcoholic beverages. This is the Hendrick's trade mark:
[3]
The trade mark is not restricted to specific colours. This is the get-up of the
Hendrick's gin bottle as sold on the market:
[4]
The defenders operate a supermarket chain which has stores in Scotland and
throughout the rest of the United Kingdom. The first defender is the parent company of the
3
second and third defenders. The second defender is the holding company for the stores in
the UK. The third defender is the main operating entity for the chain in the UK, its main
activity being the sale of grocery goods to consumers in the UK. The first defenders are the
owners of the UK trade mark No: UK00810888489 for the word "Hampstead" in class 33 for
alcoholic beverages, filed on 8 March 2012 and registered on 12 March 2013. The equivalent
EU mark held by the defenders has its roots in a French trade mark from 1991.
[5]
Hampstead gin has been sold by the second and third defenders for at least 10 years.
This was the original get-up:
[6]
The bottle and label of Hampstead gin were re-designed in 2020 by the third
defenders for sale in their stores. The re-designed version has been available for purchase
from December 2020 in stores in Scotland, England and Wales operated by the third
defenders. It is not available online or in bars or restaurants. The bottle size is 70cl, an
increase in size from the original bottle, which was 50cl. The price of the re-designed
Hampstead gin is £15.99, the original version having been sold for £9.99. In mid-
January 2021, it came to the pursuer's attention that the defenders had changed the design of
its Hampstead gin bottle. This is the get-up of the re-designed version:
4
Procedural history
[7]
The pursuer lodged a motion, before calling of the summons, for interim interdict.
No caveat had been lodged on behalf of the defenders. At the ex parte hearing, the Dean of
Faculty advised the court that the defenders' agents had been made aware of the action and
he expressed the view that the responsible course was for the motion to be continued to
allow appearance on the part of the defenders. This was, in any event, the approach that I
intended to take. On the following day, Lord Keen of Elie, on behalf of the defenders,
moved for a two week continuation in order to allow the defenders to prepare fully for the
motion hearing and to lodge draft defences. That motion was opposed. I decided to grant
the motion as there was no immediate urgency for interim orders and, in the interests of
justice, it would allow the pursuer and the court to have notice of the defender's position
and for the issues to be dealt with after proper preparation. Parties were advised to agree a
timetable for the lodgement by the defenders of the draft defences and written submissions
in advance of the continued hearing.
[8]
Having heard parties at the further continued hearing, in order to consider their
written and oral submissions on all of the points raised, and the authorities to which I was
5
referred, I indicated I would give my oral ruling a few days later and continued the hearing
for that purpose. Further authorities were then lodged by the parties in relation to the
territorial scope of any order, and at the continued hearing further submissions were made
for each side on this point. I then gave my oral ruling and indicated that I would issue this
opinion in due course.
Statutory provisions
[9]
The provisions of the Trade Marks Act 1994 founded upon by the pursuer as being
infringed are as follows:
Section 10 (2) (b):
"(2)
A person infringes a registered trade mark if he uses in the course of trade a
sign where because-
...
(b)
the sign is similar to the trade mark and is used in relation to goods or
services identical with or similar to those for which the trade mark is
registered,
there exists a likelihood of confusion on the part of the public, which includes
the likelihood of association with the trade mark"
Section 10(3):
"(3)
A person infringes a registered trade mark if he uses in the course of trade, in
relation to goods or services, a sign which--
(a)
is identical with or similar to the trade mark....
where the trade mark has a reputation in the United Kingdom and the use of the
sign, being without due cause, takes unfair advantage of, or is detrimental to, the
distinctive character or the repute of the trade mark."
6
Submissions for the pursuer
Factual circumstances
[10]
It was clear that Hendrick's gin is a world-famous brand of gin, bottled in a dark
brown/black and opaque, apothecary-style bottle bearing a diamond shaped label.
Typically, Hendrick's gin was served with tonic water over ice garnished with cucumber
instead of the traditional citrus fruit and it has been marketed widely and consistently on
this basis. Since 2000, Hendrick's gin has been sold using this distinctive get-up in almost all
major supermarkets and off-sale retailers in the United Kingdom.
[11]
While a substantial volume of products in the defenders' stores were private label
products (i.e. own brand), the defenders did stock other big brands in their United Kingdom
stores, such as Coca-Cola, Pepsi, Heinz, Nescafé, Budweiser, Corona, Stella Artois and San
Miguel. The defenders' customers were aware that well-known brands can be purchased in
the defenders' supermarkets often at discounted prices in comparison to other retailers.
This was one of the major selling points of the defenders' supermarkets for customers. The
Hampstead trade mark, being a word mark, was immaterial to these proceedings.
Hampstead gin was originally packaged and branded as shown in the image above. The
re-designed version contained a constellation of changes which simply could not have been
accidental. It significantly changed the shape of the bottle from a traditional gin shape to the
apothecary-style bottle represented in the Hendrick's trade mark. It also changed the colour
of the diamond-shaped label from white to a similar pale colour used on the bottle in the
Hendrick's trade mark. In addition, it changed the look of the label to include certain
similarities to the Hendrick's label. The re-designed version was in a darker colour of bottle,
replicating the famous dark brown/black colour used as part of the get-up of Hendrick's gin.
It includes images of cucumbers which alludes to the fact that Hendrick's gin is famous for
7
being typically (and unusually for a gin) served with cucumber. The alcohol volume of
Hampstead gin had been increased from 40% to 41.4%, a change designed to match the
alcohol volume of Hendrick's gin. The re-designed version only appears to be sold in the
United Kingdom where the defenders do not stock Hendrick's gin. In these circumstances,
there was no credible explanation for the defenders using the new version in the United
Kingdom other than the defenders having an intention to take unfair advantage of the
Hendrick's gin brand. Rather, the new version was mocked-up to ape the pursuer's
product. It was appropriate to deal with submissions in the following order.
Prima facie case
Section 10(2)(b) of the Trade Marks Act 1994
[12]
There was a clear prima facie case on this ground. The re-designed product was
similar and was being used in relation to an identical type of item, gin. The assessment of
the likelihood of confusion had to be appreciated globally, taking into account all of the
relevant factors: CCHG Ltd (t/a Vaporized) v Vapouriz Ltd 2017 SLT 907, at [114]. The matter
required to be judged through the eyes of the average consumer of the goods in question,
who is deemed to be reasonably well-informed and reasonably circumspect and observant,
but who rarely has the chance to make direct comparisons between marks and must instead
rely upon the imperfect picture of them he has kept in his mind, and whose attention varies
according to the category of goods in question: Specsavers International Healthcare Ltd v Asda
Stores Ltd [2012] FSR 19, at [52]. The high degree of distinctiveness of the Hendrick's trade
mark enhanced the likelihood of confusion among consumers. There was a likelihood of
direct confusion among consumers. Confusion could also occur when Hampstead gin is
being served to others, such as to family and friends, who would assume that it is
8
Hendrick's gin that is being served to them. There was a high degree of likelihood of
indirect confusion: L.A. Sugar Limited v By Back Beat Inc BL- O/375/10 (at para [16]).
Passing off
[13]
Again, the pursuer's prima facie case was clear. Reference was made to Reckitt &
Colman Products Ltd v Borden Inc (No.3) [1990] 1 WLR 491, at 499 (the Jif Lemon case) and
IRC v Muller's Margarine [1901] AC 217, at 223. The pursuer had a considerable reputation
and goodwill in the get-up of Hendrick's gin. The constituent parts of that reputation and
goodwill might be described as follows: (i) a gin; (ii) alcohol volume of 41.4%; (iii) designed
to be served with cucumber (the social media posts lodged as productions showed that
cucumbers are an important part of the pursuer's promotion of Hendrick's gin); (iv) sold in
a dark brown / black and opaque, apothecary-style bottle; (v) the bottle bears a diamond
shaped label in pale colours; and (vi) the design of the label, including the graphics, font and
colours of the label. The defenders' use of a similar get-up was such that it constitutes a
misrepresentation to consumers that the defenders' Hampstead gin is that of, or otherwise
associated with, the pursuer. Consumers would recognise the common elements in the get -
up and assume that the pursuer is involved in the manufacture or sale of Hampstead gin.
Reference was made to United Biscuits (U.K.) Ltd. v. Asda Stores Ltd [1997] R.P.C. 513, at 532
and 534. The pursuer would suffer brand dilution and loss of sales. There had been a
deliberate change of practice by the defenders to trade off the pursuer's reputation and
goodwill, which was a highly relevant factor: Harrods Ltd v Harrodian School Ltd,
[1996] RPC 697, at 706; Original Beauty Technology Company Limited and others v G4K Fashion
Limited and others, 21 [2021] EWHC 294 (Ch), at [405] ­ [409]; Slazenger & Sons v Feltham & Co
(1889) 6 RPC 531, at 537-538. The constellation of changes left one with no doubt that the
9
defenders' original product was changed to the infringing product to more closely replicate
the get-up of Hendrick's gin. This was demonstrated by the change of the shape of the
bottle to an apothecary bottle; the change of the colour of the bottle; the change of the label
of the bottle; the increase in liquid volume to directly match that of Hendrick's gin; and the
alteration of the alcohol volume to directly match that of Hendrick's gin. The only credible
explanation for these design changes was that the defenders intended to trade off the
pursuer's reputation and goodwill.
Section 10(3) of the Trade Marks Act 1994
[14]
The pursuer had a strong prima facie case on this ground and the defenders' main line
of argument about there being no likelihood of confusion was of no relevance. The trade
mark clearly had a reputation. Reference was made to various productions. The defenders'
re-designed product was similar to the Hendrick's trade mark for the reasons stated. The
assessment of whether a connection would be made by a relevant section of the public is
carried out having regard to all the circumstances of the case: Specsavers International
Healthcare Ltd v Asda Stores Ltd, at [120]. The fact that, for the average consumer, who is
reasonably well informed and reasonably circumspect, the new Hampstead product would
call the Hendrick's trade mark to mind is tantamount to the existence between such a link
(ibid, at [121]). Reference was also made to Pfizer Ltd and Pfizer Incorporated v Eurofood Link
(United Kingdom) Ltd, Chancery Division, 10 December 1999, at [36]. The defenders' new
design of Hampstead gin was intended to bring to the mind of consumers the Hendrick's
trade mark to enable the defenders to trade on the goodwill and reputation of that trade
mark. In support of the view that the defenders have succeeded in that endeavour reference
was made to various social media posts and a YouTube video. Detriment to the distinctive
10
character of the trade mark occurs when its ability to identify goods as coming from the
owner of the mark is weakened. In this case, there was a competing product that replicates
the distinctive design and shape of Hendrick's gin and was detrimental to the distinctive
character and repute of the Hendrick's trade mark. The defenders' product would dilute the
pursuer's brand. There was also unfair advantage, as the defenders sought to benefit from
riding on the coat-tails of the mark with a reputation: L'Oreal v Bellure NV [2010] RPC 1.
Balance of convenience
[15]
The balance of convenience favoured the grant of interim interdict. The pursuer's
prima facie case was clear on each head and particularly strong in terms of section 10(3) of the
1994 Act. The status quo was not a helpful consideration in a case such as the present where
the conduct complained of had both begun and become established prior to the pursuer
becoming aware of it. The defenders had made a deliberate decision to re-design the
Hampstead gin to replicate Hendrick's gin. The re-designed product had only recently been
introduced into the defenders' stores in the United Kingdom. The product could be stored
pending resolution of these proceedings. If the defenders wished to continue to sell
Hampstead gin in their stores in Scotland, it has readily available alternative designs for the
product, such as those being used in other international markets or the original design still
being promoted on the defenders' website in the United Kingdom. Any dilution of the
premium brand of the pursuer was likely to cause significant financial harm to the pursuer's
overall business and long-term damage to its distinctive brand. There was a real risk of the
defenders' product swamping the pursuer's product and erodin g the distinctiveness of the
Hendrick's trade mark. This damage could not be cured by a permanent interdict granted at
the conclusion of this action: Parfums Givenchy SA v Designer Alternatives Limited
11
[1994] R.P.C. 243 at 249. The substantial dilution to the pursuer's brand which the pursuer wished
to restrain may have concluded during the currency of these proceedings. This created the
risk of irreparable harm to the pursuer's brand if interim interdict is refused. The defenders
would be able to quantify any losses caused by the suspension of its ability to sell the
infringing products. However, damages would not be an adequate remedy for the dilution
of the pursuer's distinctive Hendrick's trade mark and the get-up of Hendrick's gin. It
would also be difficult to quantify the pursuer's loss of sales. These considerations have
meant that the Scottish courts tend to protect the established business against the interloper
in assessing whether to grant interim interdict. Lord Maxwell in Chill Foods (Scotland) Ltd v
Cool Foods Ltd 1977 SLT 38, at 41 observed that the balance of convenience will favour the
protection of the established business against the interloper. Reference was also made to
Dash Limited v Philip King Tailoring Limited 1989 SLT 39. The defenders have not had
sufficient time to generate material goodwill in the design of the infringing product. Finally,
there had been no undue delay in making the motion for interim interdict.
Territorial scope of the orders sought
[16]
Substantial reliance was placed on a passage in Burn-Murdoch on Interdict (para 12),
which referred to interdicts applying abroad. The author refers to the decision in
R Johnston & Co v Archibald Orr Ewing & Co (1882) 7 App Cas 219. This was followed by the
Inner House in William Grant & Sons Limited v Glen Catrine Bonded Warehouse Limited (No 3)
2001 SC 72, under reference also to other cases in which interdicts in respect of passing off
were granted in relation to conduct abroad. In the present case, the defenders were selling
the infringing products in England and Wales as well as in Scotland. Infringement of a UK
mark entitled an interdict applying across the UK. It was wrong to view the line of cases as
12
concerning only manufacturing or exporting but in any event the defenders made the
product.
Submissions for the defenders
Factual circumstances
[17]
The third defenders operated discount supermarket stores in Great Britain. They
have 867 stores in Great Britain. 105 of these stores are in Scotland. The stores are known as
"Lidl". Lidl did not sell its products online, only in -store. Lidl was well known for stocking
private label, i.e. own brand, goods. Approximately 90% of products sold at Lidl were
private label goods. The defenders did not currently have any "branded" spirits listed as
products nationally. Hendrick's gin was not sold in any Lidl stores in Great Britain and
never had been. The average consumer shopping at Lidl will be a repeat customer who is
familiar with the Lidl business model and will not be expecting to find Hendrick's gin for
sale. They will also be familiar with Lidl's own label brands, such as Hampstead. This was
an important part of the context.
[18]
Any similarities between the pursuer's product and the second and third defender's
product could not be seen out of their whole context, which includes the obvious differences
that exist between the products. Any similarities also could not be viewed outside of the
legal context. A clear and apparent difference between the products was their names. The
pursuer's mark was not a three dimensional mark and nor did it contain multiple images
showing the orientation shape or size of the bottle. The image was not capable of showing
that the bottle is round, rectangular or even hexagonal. In the get-up, some elements of the
mark had been removed and other things added. There might be a question as to whether
the mark itself has been in use. Further differences included: (i) the shape of the bottle necks
13
are markedly different; (ii) the label on the new Hampstead gin product is narrower when
compared to the Hendrick's trade mark; (iii) the colour of the labels differ; (iv) on a bottle of
Hendrick's gin the word "Hendrick's" is embossed around the neck; (v) the surface
ornamentation and background design of the labels are different - the new Hampstead gin
contains pictures of cucumber and decorative petal designs which do not feature in the
Hendrick's trade mark; (vi) the text varies between the two labels; (vii) the back label of the
new Hampstead gin recommends serving with elderflower tonic; and (viii) the new
Hampstead gin is priced at £15.99 whereas Hendrick's gin retails at approximately £30. It
was relevant to be aware of other products which can be seen to have similarities to
Hendrick's gin (for example, in relation to bottle shape, bottle colour, alcohol content and
the like). Some examples of these were contained in the defenders' productions.
Prima facie case
Section 10(2)(b)
[19]
There was a fundamental issue that the pursuer's pleadings confuse and conflate
trade mark infringement and passing off. The pursuer had no prima facie case or, if it
existed, it was weak.
[20]
There were clear and obvious differences between the pursuer's trade mark and the
new Hampstead gin product. The dominant feature of the pursuer's trade mark is the word
"Hendrick's". The dominant feature of new Hampstead gin is the word "Hampstead". For
the reasons given, the new Hampstead gin product was not similar to the pursuer's trade
mark for the purposes of section 10(2)(b). In any event, there was no prima facie case on
likelihood of confusion. Reference was made to Specsavers International Healthcare Ltd v Asda
Stores Ltd, at [52] and [87].
14
[21]
The pursuer had no reasonable prospect of proving that a likelihood of confusion
existed between the pursuer's trade mark (distinct from the Hendrick's get-up) and the new
Hampstead gin. There was no basis to hold that the average consumer might think that the
new Hampstead gin was from the same undertaking or an economically linked undertaking
as the pursuer's trade mark. Hampstead gin has been sold in Lidl for more than 10 years
and has its own reputation. The differences that are present between the pursuer's trade
mark and the new Hampstead gin removed any possibility of such confusion existing. In
the five months that the new Hampstead gin has been on sale in its current design, there had
been no evidence of actual confusion.
[22]
Lidl was well-known for its own brand stock, which makes up approximately 90% of
products on sale at Lidl in Great Britain. Lidl currently has no branded spirits listed
nationally as a permanent product. A consumer entering a Lidl store was not likely to be
looking for or expecting to see Hendrick's gin or any third party brand for that matter. In
reality, the relevant average consumer would consider that the new Hampstead gin was
from Lidl. Furthermore, a Lidl consumer was likely to be familiar with the Hampstead
brand, a brand that has been on sale in stores in Great Britain for more than 10 years.
Passing off
[23]
The factors requiring proof were set out by Lord Oliver in Reckitt & Colman Products
Ltd v Borden, at 406. Misrepresentation is a key component of an action for passing off. Any
misrepresentation must cause the consumer to believe that the product is that of the
pursuer's or that the pursuer has made himself responsible for the quality of the product.
Morroccanoil Israel Limited v Aldi Stores Limited 2014 EWHC 1686 IPEC 43 was a helpful and
relatively recent authority that has some similarities to the case the pursuer seeks to make.
15
Having regard to the principles summarised therein, when the circumstances of the present
case were considered alongside these legal principles it was apparent that the pursuer does
not have a prima facie case of passing off.
[24]
It has been long established that a difference in names is ordinarily enough to warn
the public that they are getting one trader's goods and not the others: Saper v Specter's and
Boxes Ltd (1953) 70 RPC 173. The difference in names between Hendrick's and Hampstead
in this case was sufficient to dispel any notion of passing off. When the whole circumstances
were taken into account, including all of the differences between the Hendrick's get -up and
the new Hampstead gin, the differing locations of sale, the price differences and the other
products on the market, there could be no reasonable prospect of the pursuer succeeding in
a claim for passing off. There was no adequate evidential basis to consider that there exists a
misrepresentation amounting to passing off.
Section 10(3)
[25]
For the reasons given, the new Hampstead gin was not similar to the pursuer's UK
trade mark. The claim failed on that basis alone. The alleged injury to the pursuer's trade
mark was not detailed other than in a superficial manner with reference to the wording of
the Trade Marks Act 1994. The court should be very reluctant to grant interim interdict for
this reason alone. As to the legal principles, reference was made to Comic Enterprises Ltd v
Twentieth Century Fox Film Corp [2016] ETMR 22 at [107] ­ [123] and Intel Corp Inc v CPM
United Kingdom Ltd [2009] ETMR 13 (CJEU First Chamber) ("Intel") at [27], [31], and [40]-[63].
The new Hampstead gin was not likely to call to mind the pursuer's trade mark. As such,
there was no prima facie case in relation to section 10(3).
16
[26]
Even if reasonable prospects did exist of proving a link, this in itself was not
sufficient to cause injury: Intel at [32]. The correct approach to analysing whether there is
injury caused by any link formed by the average consumer is detailed within Intel
at [65]-[81]. In order for there to be injury for the purposes of a breach of section 10(3) there
must be a linked cause liable to have effect on the economic behaviour of the consumer.
This is a requirement that needs to be positively established: Intel [2009] ETMR 13 CJEU
at [64], [71] and [77]. It requires proof that there is a serious risk that such an injury will
occur in the future: Intel at [38]. Reference was also made to Environmental Manufacturing
LLP v Office for Harmonisation in the Internal Market (Case C-383/12P EU:C:2013:741), at [43].
Mere calling to mind of the pursuer's trade mark would not be sufficient to establish unfair
advantage.
[27]
The market research lodged by the pursuer did not assist the pursuer in establishing
distinctiveness. The pursuer's reliance upon the price increase of the new Hampstead
product was wholly misconceived. The price increase arose from the increase in the size of
the bottle from 50cl to 70cl, in alignment with the price of comparable own brand products
on sale in Lidl that are 70cl, and the increase in the alcohol content. An absence of
marketing did not demonstrate free-riding. The defenders would normally advertise gin
products in the summer months. In any event, the new Hampstead gin was competing in
Lidl stores against other private label gins. No relevant evidence of injury for the purposes
of section 10(3) had been produced to the court. At the very least, any such evidence
provided was inadequate. There was no basis to consider, in circumstances where the
pursuer's trade mark is easily recognisable as distinct from the new Hampstead gin and the
two are not sold side by side, that there is any injury to the pursuer.
17
Balance of convenience
[28]
In the event of a prima facie case being established in respect of trade mark
infringement or passing off, the balance of convenience favoured the defenders. Any prima
facie case would be a weak one. There had been a delay in raising proceedings. The pursuer
had been aware of the new Hampstead gin since at least 16 January 2021. Proceedings were
not raised in Scotland until 7 April 2021. No proceedings have been raised in England. The
vast majority of stores selling the new Hampstead gin product are in England. When
assessing the balance of convenience the court should have regard to the question of
whether damages might be an adequate remedy: Elekta Ltd v The Common Services Agency
2011 SLT 815, at [26]. Where the defenders were capable of accounting for profits and/or
meeting an adverse award of damages, this was a relevant consideration pointing away
from the grant of interdict ad interim: consistent with Conoco Speciality Products (Inc.) v
Merpro Montassa Ltd (No. 2) 1991 SLT 225, at 227. Costs and inconvenience to the defenders
would result from interdict being granted. Separately, the terms of the interdict sought in
the second and third conclusions were not justified by the summons, which complains of
trade mark infringement and passing off as a result of the defenders' sale of the new
Hampstead gin.
Territorial scope of the orders sought
[29]
The line of cases relied upon by the pursuer on this point dealt with manufacturing
and exporting, allowing interdicts applicable in other jurisdictions on that basis. That was
not the case made by the pursuer. It would not be appropriate for this court to grant an
order which applied outside this jurisdiction, that is to the rest of the United Kingdom. The
approach to interim orders in England and Wales was different.
18
Decision and reasons
[30]
I begin by noting the content of some of the social media posts and the YouTube
video lodged on behalf of the pursuer. These are of course different in quality from a proper
survey, or affidavit evidence, as to the views reached by the public or indeed the average
consumer. But it is nonetheless appropriate to note their content, which includes the
following comments from separate individuals:
"...Blatant copying and ripping off of reputable brands";
"Hmmm...Reminds me of another gin, but I just can't put my finger on it..."
(followed by laughing emojis);
"Looks a lot like another bottle of gin" (followed by a winking emoji);
"I thought the exact same thing. I think that's what drew me to it" (followed by a
winking emoji);
"Looks like Hendrick's Gin";
"looks like a complete rip off of Hendricks!!";
"fake copy of Hendricks";
"Looks like it's meant to be a direct copy of Hendricks which doesn't have cucumber
in it, it is the suggested serve and heavily marketed that way"; and "I'm guessing if
it's meant to be a Hendricks rip off then it would have cucumber in it ... but not tried
it myself".
There is also a YouTube video entitled "Hampstead London Dry Gin 41.4%" uploaded on
26 February 2021 in which the reviewer notes that Hampstead gin looks like Hendrick's gin;
"the bottle is very, very similar" and the "label is very, very similar".
[31]
A bottle of Hendrick's gin and a bottle of the new Hampstead gin were lodged as
productions and I had these before me for consideration.
19
[32]
In relation to the test to be applied for interim interdict, I accept and adopt the
summary by Lord Glennie in Schuh Ltd v Shhh...Ltd 2011 CSOH 123, (particularly at [12]).
This reflects the well-established principles on interim interdict.
Prima facie case
[33]
The parties differ starkly on this, the pursuer saying there is a strong prima facie case
on each ground and the defenders saying there is no prima facie case on any of the grounds,
or, if one exists, it is weak. Based upon the authorities, there needs to be a case to argue and
a case to answer, showing reasonable prospects of establishing a right to interdict at proof.
On the three grounds, I shall follow the order in which the oral submissions were advanced
on behalf of the pursuer.
Section 10(2)(b)
[34]
I deal firstly with similarity before turning to whether it is such that there is a
likelihood of confusion on the part of the public, which includes the likelihood of association
with the trade mark.
[35]
In assessing whether the pursuer has a reasonable prospect of showing similarity, I
have considered whether there exist visual, aural or conceptual similarities. I have taken
into account what is said in the judgement of the ECJ in Specsavers International Healthcare Ltd
and Others v Asda Stores Ltd C-252/12 18 July 2013, at [32]-[48]), following a referral by the
Court of Appeal in England. I proceed on the basis of an overall impression created by the
mark and the sign, in light, in particular, of their distinctive and dominant components. I
bear in mind the need to consider the sign in context rather than in a vacuum. I also take the
average consumer of the category of products concerned as being deemed to be reasonably
20
well-informed, reasonably observant and circumspect. The average consumer normally
perceives a mark as a whole and does not engage in an analysis of its various details.
[36]
I take into account that the Hendrick's name on the mark and the Hampstead name
on the sign are different and that for each of their respective marks the name is an important
factor. However, I also have regard to the fact that the Hendrick's mark includes all colours
and that the mark has been used consistently since its registration in a dark coloured bottle.
I also take into account the other factors in the mark and the sign (i.e. the new Hampstead
product) as referred to by the parties including, but not limited to, the shape of the bottle,
the shape of the label, the design of the label, and the use of the product as gin. I follow the
approach in Emmanuel De Landtsheer v Veuve Cliquot Ponsardin and LVHM Fashion Group
[2005] E.T.M.R 12 (at [90]): that the average consumer commonly must place his trust on the
imperfect picture that he has kept in mind. A consumer in Lidl, when looking at the
Hampstead bottle, will not see on the shelf the Hendrick's bottle with its features of the
mark.
[37]
It is clear from the case law that where a logo registered in black and white has
acquired, through use, a particular and distinctive character in a particular colour, that is a
factor to be taken into account. It is of course true that in the Specsavers cases these
comments as to colour were made in the context of likelihood of confusion, but logically
they must also apply to the pre-condition of similarity. When viewed in the context of the
dark colour of the bottle consistently used, the pursuer's trade mark has a distinctive
character.
[38]
I note that the Hampstead product is in a dark coloured bottle, with a diamond label,
(albeit not in exactly the same dimensions as in the mark), that the Hampstead bottle shape
is similar to that on the mark, and that the Hampstead product bears the word
21
"Handcrafted" on the label, as does the pursuer's mark. The artwork above the Hampstead
gin name on the label now contains an image of juniper. An image of juniper is also used in
the artwork above the name Hendrick's in the pursuer's mark. The new Hampstead
product also adds a scroll design either side of the word "GIN" and a scroll design is used
either side of the word "GIN" in the Hendrick's mark. Similar concepts are evoked by the
mark and the sign.
[39]
Notwithstanding the existence of some measure of dissimilarity, having regard to a
comprehensive assessment, there is a sufficient basis to argue visual and conceptual
similarity between the mark and the sign. Bottle shape and colour are often intended to be
distinguishing features of gin products. The social media and YouTube material put before
me provide some support for similarity. In reaching that view, I of course have regard to
the Hendrick's mark rather than the get-up of the Hendrick's gin product and I therefore
leave out of account matters not in the mark, such as the alcohol by volume level of 41.4%.
[40]
On the likelihood of confusion on the part of the public, which includes association
with the trade mark, the case law is clear. As put in Pfizer Ltd and Pfizer Incorporated v
Eurofood Link (United Kingdom) Ltd, at [29]: "It must however be remembered at all times that
the nature of the confusion that must be proved is confusion as to origin."
[41]
I accept that the more distinctive the mark the greater is the likelihood of confusion
and that the Hendrick's mark relied upon is quite distinctive and recognised on the market.
I also have regard to the points made regarding the inference to be drawn that the defenders
did seek to cause some connection in the mind of the average consumer between the brands.
[42]
However, taking all of the circumstances into account, I conclude that the pursuer
does not have a prima facie case on the likelihood of confusion, including indirect confusion.
22
I note that Kerly at paragraph 11-061 describes indirect confusion as inferring a common
commercial origin.
[43]
I reach that view on my own objective global assessment and also taking into account
(although not of itself a decisive factor) that there is no evidence allowing the inference of a
common commercial origin. The social media and YouTube references founded upon by the
pursuer do not indicate that position. On the matter of the average consumer, I have some
difficulty in accepting that using the Hampstead bottle in, for example, a garden bar (as was
suggested on behalf of the pursuer) may be a factor in the absence of any real evidence of
the proportion of such use.
[44]
Having regard to the fact that, on the information put before me, the Hampstead
bottle is in stock only in Lidl and is priced at £15.99 rather than the significantly higher price
of Hendrick's, and standing the differences that do exist, such as the names, I am unable to
conclude that the average consumer would be likely to be confused as to common
commercial origin.
[45]
So while there is some similarity there is, as things stand, no reasonable prospect of
showing that it is such as to cause a likelihood of confusion or association with the mark of
the kind required. That matter may no doubt change when evidence is led at a proof, if that
occurs, but as things stand there is no prima facie case on this ground.
Passing off
[46]
Turning next to passing off, I do consider that there is sufficient material, from the
information put before me, to infer (for the purposes of a prima facie case) that there was a
deliberate alteration of the get-up of the Hampstead product to seek to cause at least an
association with Hendrick's. In relation to taking intention into account, I note what was
23
said in Original Beauty Technology Company Limited and others v G4K Fashion Limited and others
(at [405], quoting from Slazenger & Sons v Feltham & Co at 537-538) about the court not being
astute to say that the person taking such steps "cannot succeed in doing that which he is
straining every nerve to do" and also the relevance of knowledge on the part of the
defenders of the market (paras [407] and [408]).
[47]
However, there is of course a difference between, as it is put in the case law, living
dangerously, but endeavouring to keep a safe distance away (for example, arguably by use
of a different name) and on the other hand deliberately intending to cause deception:
Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] (at [115]). That is a matter of
fact and I am unable at this stage to conclude that the information before the court
sufficiently supports (for the purposes of a prima facie case) a deliberate intention to deceive
rather than just an intention to live dangerously. In any event, that is only one of the factors
in the global assessment.
[48]
Taking into account all of the relevant factors, including the distinguishable names,
the place where Hampstead is sold (the Lidl stores), the price of Hampstead gin, and the
important requirement of a need to have a reasonable prospect of establishing that the
average consumer would assume that Hampstead is the same as Hendrick's or from the
same manufacturer or licensed by Hendrick's, I conclude that there is currently no
reasonable prospect that the test for a misrepresentation required for passing off will be met.
In this specific context, as before, I view the social media and YouTube evidence as not
providing sufficient support for the pursuer's contention. For the purposes of passing off,
the fact that the Hampstead bottle brings to mind Hendrick's is not, of course, enough.
[49]
I would add, and this also applies in relation to section 10(2)(b), that I accept the
point made by the Dean of Faculty that the fact that the names differ does not, of itself,
24
prevent a likelihood of confusion or misrepresentation. Reliance was placed on the use of
"Asda" in the Specsavers case and "Viagrene" in the Pfizer case, as being different from the
names in the marks. I would merely say that in the Specsavers case there were two so-called
straplines one of which referred to "Spec savings" and the other to "spec saver", and that
was a factor taken into account. Viagrene is plainly much closer to Viagra than Hampstead
is to Hendrick's. In any event, for the reasons given, my conclusion on misrepresentation
does not rest simply on the names being different, although that is a factor.
[50]
Again, it is possible that the position on misrepresentation may change when
evidence is led at a proof, if that occurs, but as things stand there is no prima facie case on this
ground.
Section 10(3)
[51]
In relation to similarity in this context, the test is set out in Intel Corp Inc v CPM
United Kingdom Ltd:
"30.
The types of injury referred to in art.4(4)(a) of the Directive, where they occur,
are the consequence of a certain degree of similarity between the earlier and later
marks, by virtue of which the relevant section of the public makes a connection
between those two marks, that is to say, establishes a link between them even though
it does not confuse them (see, in relation to art.5(2) of the Directive, General Motors
at [23]; Adidas-Salomon at [29], and Adidas AG at [41])."
Thus, a link is required and, in reliance upon Intel Corp Inc (at [60]), it was said in Specsavers
(at [121]):
"The fact that, for the average consumer, who is reasonably well informed and
reasonably circumspect, the sign would call the registered mark to mind is
tantamount to the existence of such a link..."
[52]
This requires an objective assessment in light of all of the relevant factors. For the
reasons I gave in relation to section 10(2(b), I accept that the sign is sufficiently similar to the
25
mark. The social media and YouTube material put before me provide support for the view
that the mark is called to mind and indeed that there may well be what can be described as a
transfer of image of the mark.
[53]
There is, of course, no need to establish a likelihood of confusion but there are further
requirements to be met: the trade mark must have a reputation in the United Kingdom and
the use of the sign must take unfair advantage of, or be detrimental to, the distinctive
character or the repute of the trade mark. From the material put before me, I am in no doubt
that the trade mark relied upon has a reputation in the United Kingdom.
[54]
I have considered the various authorities to which I was referred in relation to unfair
advantage and detriment. In short, I view Argos Limited v Argos Systems Inc
[2018] EWCA Civ 2211 as of assistance in summarising the law, and I place particular reliance upon
paragraph [107]. There, in the context of showing detriment, the court referred to evidence
being required of a change in economic behaviour of the average consumer of the goods or
services or a serious likelihood that such change will occur in the future (under reference to
Environmental Manufacturing LLP v Office for Harmonisation in the Internal Market).
[55]
I accept that the pursuer in the present case has not (as yet) provided a sufficient
basis to show a reasonable prospect of success in establishing a change in the economic
behaviour of the average consumer or a serious likelihood that such a change will occur in
the future. I do however recognise that there is at least some risk to the pursuer of harm to
the brand.
[56]
But the court in Argos also said that it by no means follows that there is a
requirement for evidence of a change in the economic behaviour of consumers of the trade
mark proprietor's goods or services in order to establish the taking of unfair advantage of
the distinctive character or repute of the trade mark:
26
"[107]...In my judgment, it should be sufficient to show a change in economic
behaviour of customers for the defendants' goods or services in order to show that
the use of the sign is taking unfair advantage...."
[57]
I note also the point made by Arnold J in Jack Wills Ltd v House of Fraser (Stores) Ltd
[2014] FSR 39 (an authority cited with approval in Argos at para [107]), where he said
(at [80]):
"It is also clear from the case law both of the Court of Justice and of the Court of
Appeal that the defendant's conduct is most likely to be regarded as unfair where he
intends to benefit from the reputation and goodwill of the trade mark."
[58]
I take that factor into account and find that there is a reasonable prospect of success
for the pursuer in showing that the defenders intended to benefit from the reputation and
goodwill of the pursuer's mark. Whether or not there was a deliberate intention to deceive,
there is a sufficient basis for showing that there was an intention to benefit. It is difficult to
view the re-design, including the change in colour of the bottle, as accidental or coincidental.
Arnold J also referred to the change in economic behaviour of the defendant's customers, as
later came to be mentioned in Argos. Arnold J formed the view (at [109]-[110]) that the case
before him was "a classic case of a retailer seeking to enhance the attraction of its own brand
goods by adopting an aspect of the get-up of prestigious branded goods" and the retailer
"was seeking to influence the economic behaviour of consumers". The pursuer has a
reasonable prospect of establishing those points in the present case and also of showing that
the defenders are likely to succeed in that endeavour.
[59]
It is readily to be inferred that, in taking these steps, the defenders' plan was to
increase the attraction of the Hampstead product to their customers and, on the information
available, that appears to have been done where the defenders did not undertake any
advertising or promotion for the marketing of the Hampstead product. There was no
27
suggestion of any separate justification for the defenders' conduct; that is, no suggestion of
this being done with due cause.
[60]
I therefore conclude that there is a reasonable prospect of success on the part of the
pursuer in showing a change in economic behaviour or a real likelihood of such a change by
customers who buy from Lidl, and hence that it has created an unfair advantage.
[61]
In that regard, the social media and YouTube material, which I have not viewed as
sufficient to support the other grounds, comes into play. Although I fully recognise its
limited evidential significance, there is some support within that material for the proposition
of Lidl riding on the coat-tails of the Hendrick's mark so as to benefit from its attraction and
also that this could influence the economic behaviour of the defenders' customers. Part of
the intention of the defenders appears to be that customers in Lidl who buy this version of
Hampstead pay about 60% more than the price of the previous 50cl bottle (the new bottle
being 40% greater in volume).
[62]
Accordingly, there is a prima face case in respect of the claim based on section 10(3).
Balance of convenience
[63]
As to the balance of convenience, the following factors are in my view of particular
relevance.
[64]
This is a relatively new product for the defenders, in this particular get-up. The
pursuer's product has been on the market in this form for quite some time and has an
established reputation. If interim interdict is refused, but the pursuer succeeds at proof,
then while there is no evidence yet of a change in economic behaviour of the average
customer, there is still at least a risk (and I accept it is just a risk) of damage to the brand in
the interim period. That period could, in light of any appeals, last for perhaps a couple of
28
years. Quantification of any loss of sales of Hendrick's gin, should that become an issue,
will also be problematic, given that the product is sold in a wide range of retail outlets. Any
award of damages if the pursuer succeeds is therefore likely to be difficult to quantify. On
the other hand if the defenders succeed at proof, in the interim any damage to the defenders
is limited to loss of sales and some, albeit relatively contained, associated inconvenience.
While there may be some issues regarding quantification of that loss, these differ markedly
from the problems in respect of the pursuer's loss. The court will be able to adopt a broad-
axe view, based on information the defenders can readily supply as to sales of the new
Hampstead gin prior to this decision and sales of other products within their units, to
calculating quantum for lost sales if the defenders succeed. The defenders also have another
get-up to sell the product, which is not challenged, so it is just the sales of Hampstead in this
particular get-up that are stopped. Overall, I see little material prejudice to the defenders if
interim interdict is granted but they then succeed after proof, and any inconvenience to
defenders is of limited effect.
[65]
In contrast, there is a real possibility of material prejudice to the pursuer if it
succeeds at proof and in the meantime runs the risk of suffering damage to its brand. I take
into account the point made by Lord Keen as to only 7% of the product in question being
sold in Scotland and his submissions on the territorial scope of the order, but I am unable to
conclude that no further steps will be taken by the pursuer in respect of England and Wales
nor can I predict the outcome. Further, the point that there might be greater harm elsewhere
does not outweigh the fact that harm in this jurisdiction could well result. I therefore do not
accept that this point materially affects the position on the balance of convenience.
Preservation of the status quo can be a factor but where a new product has just been brought
on to the market it is not of great significance. On the defenders' other point that there has
29
been a delay in raising the proceedings, the parties were in communication for a period of
time about the issues and I am not persuaded that there was any unjustified delay that could
affect the balance of convenience.
[66]
For these reasons, the balance of convenience favours the pursuer.
Territorial scope of the order
[67]
The basis for jurisdiction averred by the pursuer is wrongs said to have been
committed in Scotland, including trade mark infringement. While the terms of the interdict
sought have no geographical restriction and there are averments about retailing in the rest of
the United Kingdom, the pursuer avers (albeit in relation to jurisdiction) that:
"This action has as its subject-matter wrongs which have taken place and it is
apprehended will continue to take place in Scotland."
[68]
In the Inner House in William Grant & Sons Limited v Glen Catrine Bonded Warehouse
Limited it was argued that the Lord Ordinary had erred in holding that interdict should
apply in respect of export of the defenders' products bearing the name Grant's to all
countries, since the evidence did not warrant a view that exports to all overseas markets
were unlawful. As is clear from the Opinion of the Lord Ordinary who dealt with the
debate in William Grant and the Opinion of the Lord President (Rodger) following the
reclaiming motion, the wrong complained of occurred and was completed in Scotland prior
to the product in question being exported. In those circumstances, rather than having to sue
the same defender in other countries to where the products were sent, an interdict based on
a completed wrong in Scotland having been aimed at passing off elsewhere, was viewed as
appropriate. The interdict was said by Lord Rodger to be in a form of the injunction as
sanctioned by the House of Lords in R Johnston & Co v Archibald Orr Ewing & Co. That form
30
basically prevented the affixing of certain signs by the defendant in respect goods in
England which were to be exported abroad and could deceive purchasers there.
Lord Rodger referred to a "single interdict preventing exporting" being granted in the
William Grant case.
[69]
As passing off was held to be complete, at the latest, when the defender exports the
goods which will deceive persons in the foreign market there was no need to consider
whether a wrong would be committed under the law of the foreign market. In essence, a
person cannot make a false representation in another country as a result of deceptive goods
being sent to him from Scotland, and that can be prevented by interdict here. Other
authorities of relevance to this issue include John Walker & Sons v Douglas McGibbon &
Company 1972 SLT 128 and James Burrows Distillers plc v Spey Malt Whisky Distributors Limited
1989 SLT 561.
[70]
I therefore conclude that what is said in Burn-Murdoch on Interdict (para 12) and in
this line of case law is of no relevance to the issue of territorial scope in the present case.
Here, the action was raised in Scotland on the basis that the wrong was committed in
Scotland. It is not averred that the Hampstead gin product is made in Scotland. If the
alleged wrong is merely retailing rather than manufacturing and exporting, then an interdict
preventing infringement in another country, including England and Wales, is not supported
by those cases. The interdict here does not deal with exporting abroad.
[71]
Without suggesting that these are of particular relevance for present purposes, I note
that in the context of intellectual property there are authorities which touch on the territorial
scope within the UK of interim orders in Scotland (see eg
UVG Ambulances Ltd v Auto
Conversions Ltd (Wilker Auto Conversions) 2000 ECDR 479, at para [10], although not in the
context of trade mark infringement, and Speechworks Limited v Speechworks International
31
Incorporated 2000 ETMR 982 (at para [27]). There may well be other considerations and
authorities that relate to territorial scope, given that trade mark protection applies
throughout the United Kingdom. However, on the basis of the averments, submissions and
authorities put before me, I am unable to conclude in the factual circumstances of this case
that this court can make an interim order extendin g in territorial scope beyond Scotland. I
therefore find, at this stage in the proceedings, that the order does not extend beyond
Scotland.
Disposal
[72]
For those reasons, I shall grant the pursuer's motion in respect of section 10(3) of the
Trade Marks Act 1994 and grant interim interdict in terms of the second conclusion of the
summons (as amended).


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