Philip Warren & Son Ltd v Lidl Great Britain Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Daniel Alexander |
| Judgment Date | 26 August 2021 |
| Neutral Citation | [2021] EWHC 2372 (Ch) |
| Docket Number | Claim Number: IL-2019-000149 |
| Court | Chancery Division |
[2021] EWHC 2372 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (Ch.D)
SHORTER TRIAL SCHEME
As from: The Rolls Building
London EC4A 1NL
Mr Daniel Alexander QC
(Sitting as a Deputy Judge of the Chancery Division)
Claim Number: IL-2019-000149
Nicholas Bacon QC (on costs) and Andrew Lomas instructed by Stobbs IP for the Claimant
Benet Brandreth QC and Tristan Sherliker (of Bird & Bird) instructed by Bird & Bird for the Defendants
Hearing date: 1 June 2021 with further written submissions on 16 and 26 July 2021.
APPROVED JUDGMENT
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
Mr Daniel Alexander QC
INTRODUCTION
By a judgment dated 30 April 2021 ( [2021] EWHC 1097 (Ch)) the court dismissed the claimant's (“PWS's”) claim and the defendants' (“Lidl's”) counterclaim for passing off. Three issues arose at the consequential hearing on 1 June 2020: (i) costs; (ii) whether a publicity order should be made in accordance with Samsung v. Apple and (iii) permission to appeal. This decision is long because of the multiple points raised on costs and issues of approach to a publicity order. It gives fuller background, which is part of the context for both issues.
Procedural history of this aspect of the case
This consequentials judgment has had an unusual procedural history. Following the hearing on 1 June 2021, the court provided a confidential draft judgment on 14 June 2021 for handing down on 18 June 2021. On 17 June 2021, the court received a note from counsel for Lidl inviting account to be taken of a number of points in the final judgment and for handing down to be postponed by 7 days, which was done. No submissions were received on behalf of PWS at that stage. However, in addressing Lidl's points, I concluded that further brief submissions should be permitted, for a number of reasons, which I gave in a short summary. These included the fact the parties had not referred to all of the potentially relevant authorities (of which some were referred to in the draft judgment) and that argument on behalf of PWS specifically on the basis upon which costs should be awarded had been brief. I deal with some of the other points raised below. In the circumstances, it was desirable to give the parties an opportunity to advance any additional submissions and/or authorities in favour of or against PWS bearing Lidl's costs on an indemnity basis, before the decision was finalised. I therefore adjourned hand-down, made an order for an interim payment for costs assessed on the standard basis, to be paid by 31 July 2021. I gave permission for the further submissions to be made in writing. However, PWS instructed additional specialist costs counsel and indicated that it may wish to have a hearing but I ruled that this would be disproportionate and instead gave permission to the parties to respond briefly to each other's supplementary submissions by 26 July 2021. They did so and I am grateful to the parties for their submissions, which are now very comprehensive. In particular, Mr Nicholas Bacon QC, who had not been previously involved in the case, assisted with the extensive subsequent written submissions on costs on behalf of PWS. In the light of the overall decision I have reached, it has not been necessary to address all of the points made in these additional submissions but I have taken account of some of the points made in also adjusting the language to clarify certain points.
I indicated that Lidl's application for a publicity order would be refused, with permission to re-apply by that date, for reasons to be given in a composite judgment, dealing with all of the issues. In the event, Lidl did not reapply for a publicity order. I had originally drafted the decision in a somewhat more colloquial style than is conventional, since Lidl had asked for an order publicizing the main decision in the popular press as well as linking to it and it seemed appropriate to try to make this decision as accessible as possible in case that was sought to be linked as well. Since that relief is not pursued, I have somewhat redrafted and shortened the text, particularly since parts of the decision relating to the publicity order are now largely of historical interest and chiefly only to the parties.
At the hearing on 1 June 2021, permission to appeal from the main judgment was granted on certain limited grounds set out in the draft Grounds of Appeal and an extension of time for the Notice of Appeal was ordered to 31 July 2021. This has since been extended further, in the light of the timetable for further submissions.
Part of the reason for devoting more attention than usual to this issue is that the case has some hallmarks of one which has been brought in what Lidl has described as a speculative investment in the hope that PWS and its lawyers will receive very large returns. Having considered the evidence at trial and what PWS's lawyers previously said, by implication, about its likely value in justifying the particular damages-based agreement made to pursue the case, there is a significant likelihood that even if the claim had succeeded (or ultimately succeeds following an appeal and any further proceedings) the sum awarded would not be materially different from that offered by Lidl to settle the whole case in October 2020. I had originally thought that, partly because it was not possible to say definitively at this stage that the claim was exaggerated and that PWS was unreasonable to have refused Lidl's offer to settle it, it would be wrong to award indemnity costs. I have not changed that view fundamentally, as a result of the further submissions for reasons explained more fully below, but have concluded that the better approach is to make a somewhat different order which will enable the court to address this issue and provide fuller compensation on costs, should it turn out that the preliminary view of the merits of the financial claim is correct. In that event, the entire proceedings, including the need to take steps to address the reporting of them (which are addressed in the publicity order aspect of this decision) would have not been a fruitful use of time and money since October 2020, in the light of a reasonable offer to settle the case made at that stage. Without that adjustment, Lidl would be at risk of both being significantly out of pocket in that event and insufficiently rewarded for having made a reasonable attempt to settle the case at an early stage. In principle, the making of early reasonable offers should be incentivized and refusing them should be a high risk strategy. If no opportunity to address this is given, PWS may ultimately be in a position in which it would not be liable to pay the full costs of having pursued a claim which should not have been pursued in the light of that offer. It, and its lawyers, would therefore have been able to take advantage of the chance of a potentially large (albeit unlikely) claim but without having to bear the full costs which doing so imposes on others if it fails. In my view that general approach is not mandated by but is broadly consistent with the case law cited by the parties since the hearing.
BACKGROUND
In order that this decision can be understood on its own, I first summarise some of the key substantive aspects of the case, highlighting those which matter most for this judgment.
PWS is an award-winning Launceston-based family butcher with a predominantly local retail business and a significant wholesale business, supplying, among others, well-known high-end restaurants in London and elsewhere. It has used various forms of branding, but most recently predominantly in the form
but also other branding, such as PHILIP WARREN AND SON.
In 2014, Lidl decided to rebrand its main fresh meat range to use the mark WARREN & SONS largely in this form.
On the evidence, Lidl did not choose the mark because of PWS or to imitate it and PWS did not contend that Lidl had done so. However, in replacing an earlier Lidl own brand, Lidl wanted an own-brand mark redolent of an English provincial butcher. WARREN & SONS was one choice out of several fictional ones and was not at the top of its list. Problems with other potential choices meant that Lidl adopted WARREN & SONS but, on the evidence, it appeared likely that there would have been a range of “traditional” sounding options. Lidl did find out about PWS's existence before deciding to use the brand, but PWS did not have a registered trade mark and Lidl did not think PWS would have a right to object. Lidl registered a trade mark for WARREN & SONS without complaint and products bearing that mark started to be sold in June 2015.
From 2015 to 2020, when the WARREN & SONS brand was abandoned, hundreds of millions of packs of this brand were sold in the hundreds of Lidl stores around the country. Other than an isolated communication, no problems of possible confusion with PWS came to Lidl's attention.
Lidl's change of branding was known to PWS in late 2015 from a wrongly directed customer e-mail, which suggested some confusion. There were further occasional reports of confusion which caused annoyance and upset but were dealt with by PWS as they arose. The problem was not mentioned to Lidl at the time. PWS explained that this was because they did not know that they may have...
To continue reading
Request your trial