Lidl

Coming up against an infamous trade mark filer

Lidl was established in Germany in 1973 and opened its first UK store in 1994. Lidl is now the seventh largest supermarket in the UK, with market share of around 5.3%. It has consistently increased this by providing high quality products for low prices in its ‘no frills’ approach. We began working with Lidl before it entered the UK market, advising on the adoption of brands, clearance for use and registration.

Case Study

Case Type

Opposed trade mark application

Action

Trade mark opposition defence

Outcome

Costs award

Issue:

Lidl’s UK trade mark application for the mark CONNELL FARM in respect of eggs was accepted and published for opposition purposes in April 2016. Lidl already had a trade mark registration of the same mark in respect of meat and meat products.

An opposition was filed by a Namibian company, Namib Brand Investments (PTY) Ltd, based on a pending UK application for the mark FARM in respect of a variety of produce, including: meat, poultry, milk products and eggs. The UK application was filed within six months of a Namibian application from which it claimed priority. This meant the Namibian application qualified as an earlier right, but was still under examination for suitability as a trade mark at the UKIPO. The opponent could have extended the deadline to oppose Lidl’s application by one month by filing a ‘Notice of Threaten Opposition’ — but it did not give any warning, and filed an opposition. Upon investigation, it became apparent that the opponent was a company with links to the infamous Michael Gleissner.

Mr Gleissner’s name is known in trade mark and domain name circles as a prolific filer of trade marks — the motivation for which appears to be to assist in obtaining domain name registrations. He is the sole director of hundreds of UK and overseas companies. In 2017, the UKIPO confirmed that at one stage, 8% of all contested trade mark cases at the UKIPO involved a Michael Gleissner company.

Action:

Lidl had no interest in negotiating with the opponent because the mark of the application was clearly not registrable and dissimilar to its own mark (or if it was similar, Lidl could challenge the FARM application on the same basis). In order to suspend the opposition, we had to file a defence and counterstatement. Eventually, the opposition ended because the application, which was the only ground of opposition, had been refused.

We requested costs for the spurious action of the opponent, which the UKIPO initially refused. Although the costs awarded would only be small, we recommended to Lidl that this should be pursued as a matter of principle.

Outcome:

A hearing took place and the Hearing Officer agreed that Lidl should be granted a costs award. The costs were eventually settled by the opponent.

Although the costs award was relatively small, Lidl stood its ground, making full use of the processes available to applicants of any size when on the receiving end of an opposition from any third party. At UDL, we have specialist knowledge and day-to-day experience of the rules and procedures at the UKIPO — so we are best placed to guide applicants through the registration system when objections are encountered.

For more information please contact Anna Szpek at ats@udl.co.uk.

020 3904 3365

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