Lidl ordered to stop selling gin which looks like Hendrick's outside of Scotland

William Grant and Sons Irish Brands Ltd won an interim interdict against the German supermarket chain earlier this year. 

The firm instructed lawyers to go to the Court of Session in Edinburgh as it believed the retail giant’s "Hampstead gin" brand resembled their own product. 

The drinks company believed the supermarket redesigned the Hampstead gin bottle to resemble the "apothecary-style bottle" used by Hendrick’s. 

Lawyers for Grant’s told Lord Clark that other features of the Lidl gin product resembled their product. The Court of Session heard that Grant’s feared sales of Hendrick’s could be affected by the sale of the "redesigned bottle".

Judge Lord Clark agreed with the submissions made by the lawyers. He concluded that the firm may have a case to argue that Lidl breached trade mark legislation. 

The judge then passed a court order which prevented Lidl from selling the "redesigned" Hampstead gin in Scotland. 

Lawyers for the supermarket then addressed appeal judges at the Inner House of the Court of Session to argue that Lord Clark had made errors in his judgment. They wanted the court order to be quashed. 

Judges Lord Carloway, Lord Woolman, and Lord Pentland rejected the arguments made by the supermarket. 

However, they upheld a submissions made by the drink company’s lawyers asking for the interim interdict to be extended to ensure the redesigned Hampstead gin couldn’t be sold in other parts of the United Kingdom. 

In a written judgement, Lord Carloway wrote: “The Intellectual Property judge correctly applied the law.

“Grants’ case is not a weak one although, no doubt, it is far from being one in which ultimate success is guaranteed. 

“There is no indication that the judge failed to take a relevant consideration into account or that he took into account an irrelevant one. 

“It is clear from the approach of the courts in England .. that the grant of orders, against persons who are domiciled in the jurisdiction, which have an extra territorial effect are commonplace. The same approach is appropriate in Scotland.

“Quoad ultra it will refuse the reclaiming motion and adhere to the interlocutor as so amended.”

In proceedings earlier this year, Wiliam Grant’s legal team also argued that the redesign also changed the colour of the diamond-shaped label from white to a similar pale colour used on the bottle in the Hendrick’s trademark.

They argued that the look of the label was changed to look like the Hendrick’s label and the bottle was in a darker colour of bottle - just like Hendrick’s.  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 by Hendrick’s.

The lawyers also said the redesign contained images of cucumbers - and this "alluded" to the fact that Hendrick’s was unique in being served to drinkers with cucumbers. 

They also pointed to comments made on social media in which people remarked on the similarities between the two products.

Lord Clark also wrote that Lidl could sell the Hampstead gin brand but in a form which differs from the "redesigned" version. 

The action brought by William Grant follows an action brought earlier this year to the English High Court by Marks & Spencer against Aldi. 

M&S claim that Aldi was breaching its intellectual property rights by selling its Cuthbert cake. The firm claim the supermarket was breaching its Colin the Caterpillar trademark. 

The appeal judges concluded that Lord Clark made the correct decision in granting the order. 

Lord Carloway wrote: “For these reasons, the court will allow the cross appeal and recall that part of the Intellectual Property judge’s interlocutor of 18 May 2021 which states ‘in Scotland’.”