Passing Off – Don’t Let Failing to Register Brand Names Butcher your Claim!

Background

In the case of Philip Warren & Son Ltd v Lidl Great Britain Ltd & Others [2021] an action for passing off was brought by a Cornwall-based family butcher business, Philip Warren & Son (PWS), against the Lidl supermarket chain. PWS had used the “Philip Warren” name since the 1980s, and had began using a logo with the words “Philip Warren” in recent years. By comparison, Lidl started using the mark “Warren & Sons” in 2015, for a range of fresh meat products sold in its stores. It had already decided to stop using this mark prior to PWS bringing the passing off claim, and officially stopped using it in 2020.

The Classical Trinity

In assessing passing off claims, the courts typically use a three-pronged test, requiring:

• A goodwill or reputation attached to the goods or services.
• A misrepresentation by the defendant to the public (intentional or not) leading or likely to lead the public to believe that the goods or services offered by him are the claimant’s goods or services.
• Damage to the claimant, arising from the erroneous belief caused by the defendant’s misrepresentation.

Considering the goodwill and reputation attaching to Lidl’s meat products, the court found that PWS was not universally known, even locally, it was unlikely that a significant number of Lidl customers would have been aware of PWS’s business. It was also unlikely that there would be much customer overlap between PWS’s upmarket business and Lidl’s price-conscious brand, so any goodwill known to PWS’s customers would be unlikely to be known to Lidl’s customers.

As for the misrepresentation element, the judge pointed out that any evidence of confusion on the public’s part was weak. The confusion was limited to a few reports of PWS’s customers believing that PWS had started to supply meat via Lidl, some misunderstandings relating to online search results, and a few complaints about the Lidl products directed towards PWS. All of these were enquiries were quickly resolved. There was also no evidence that any of Lidl’s customers falsely believed that Lidl’s Warren & Sons range of products were sourced from PWS.

On damage, the court dismissed PWS’s suggestion that this amounted to the millions of pounds of profit made by Lidl on the Warren & Sons products. Even if there was loss suffered by PWS as a result of Lidl passing off (considering the two previous limbs of the test, there was not), it was nowhere near the amount sought by PWS.

As such, the claim was dismissed.

Lessons Learned

This case demonstrates the difficulties faced by a claimant in proving passing off. PWS had used the brand name since the 1980s, and Lidl’s use of the name “Warren & Sons” was for meat-based products similar to those sold by PWS. Despite this, PWS’s claim failed, demonstrating the very high bar which a claimant must clear to succeed in a passing off case.

If PWS had registered its brand name as a trade mark and brought a claim for infringement of trademark under the Trade Marks Act 1994, it might have had more success. Under section 10 of the Act there are a number of circumstances where a registered trade mark can be infringed, and although some of these require the existence of “a likelihood of confusion”, it tends to be accepted that pursuing an action for infringement of a registered trade mark is more straight forward than taking action for passing off. The other advantage of having a registered trade mark is that it increases the chance of third parties being aware of the registration which may have a deterrent effect in the first place.

If you would like more information about registering your business’s brand name please contact Charlotte Burroughs ([email protected]) or one of the other members of our Commercial & Technology team.