Passing off is often added as an afterthought to a trade mark infringement action. In those circumstances, it is very often successful. The line between a deception (required for passing off) and likelihood of confusion (trade mark infringement) is subtle but there is a significant degree of overlap between the two. However, where there is no registered mark and it is first necessary to establish goodwill in a particular name, logo or get up, the relevant deception is much more challenging.
For those unfamiliar with the classic IP trinity, the key elements of passing off are goodwill, misrepresentation and damage. The apparent simplicity of the test can create challenges for unwary litigants.
A recent High Court case (conducted in the Shorter Trials Scheme - discussed here) looks at the scope of passing off in detail and considers where the line is for a small local butcher taking on an international supermarket chain. There is no doubt that, in terms of the party sizes, this is a David v Goliath case. However, in this case Goliath had stopped infringing before the claim was issued. Whilst this is never the end of the story, it was stated by David (AKA the butchers, Philip Warren & Son) to have been the primary reason for bringing the claim in the first place.
Philip Warren is a local butcher in Launceston, Cornwall. It is known in the local area and via its wholesale business which supplies a variety of high end restaurants such as Hawksmoor and Blacklock*. In some instances, the butcher's name is referenced on the menu. To paraphrase the judge (Daniel Alexander QC)'s findings, Philip Warren is at the luxury end of the butcher spectrum.
Lidl needs little introduction to European audiences. It is well known as a discount no thrills supermarket which has stores spread across the UK, including, but by no means limited to, near to Launceston. It operates a variety of own brands under names which could easily give a consumer the impression that they are created by a third party. Warren & Sons was one such brand.
The two businesses appeal to different customers and whereas some people would have been familiar with both businesses, those who did know both would have been unlikely to be deceived into believing there was a connection.
So how did the case get this far? I blame the internet.
The key evidence
As is so often the case, the key evidence came in the form of customer complaints.
Complaints to Lidl
At first glance, the following complaints to Lidl might appear to hand the case to Philip Warren:
"Today I purchased a whole cooked chicken from the brand Warren & Sons…. I'm really not happy about this as at £3.99, it isn't exactly the cheapest item on the menu. Can you please let me know how whether I should contact the brand directly about this issue, or whether it's something you can resolve."
" We suggest that someone should test this as we will no longer buy ""Warren & Sons"" products. I tried to leave a message on their site rather than send to you but there does not appear to be space on that site."
"…I bought in your Weston Super Mare store some SMOKED THICK CUT BACON supplied by Warren & Sons…. I am sure they could find themselves in trouble with the Trades Description Act? Please can you contact me about this situation to put things right and to contact your supplier about it so they can make sure it does not happen again. "
"I recently bought cooked chicken thighs manufactured by Warren &Son from Lidl in Maidenhead…"
"GET WARREN &SONS TO SUPPLY BETTER PRODUCTS"
"…I buy this one because it is supposed to be better for you. I feel that the co Warren were trying to get rid of these slices by hiding them with good ones. I shop at Lidl all the time and love the non food items and the in-store bread."
As the judge noted, this evidence shows that a lot of people (incorrectly) assumed that Warren & sons was a third party brand and not, in fact, Lidl. It does not show that people assumed that the relevant third party brand was the claimant.
Similar issues arose in relation to the evidence from customers in shops (which was heresay) and complaints to Philip Warren (which all seemed to be the result of internet searching after the event).
On closer examination, all of the examples from Philip Warren were inquiries and not assumptions of a connection. Ultimately, the absence of evidence of actual confusion, despite the fact that a Lidl store was less than a mile away from the claimant's flagship Launceston butcher shop proved fatal.
Philip Warren & Son Ltd v Lidl Great Britain Ltd & Ors [2021] EWHC 1097 (Ch) (30 April 2021)
*Blacklock was founded by Gordon Ker, who I trained with at Olswang many years ago. A great example of the many post law careers for those who don't find passing off law quite as fascinating as me!
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