Hendrick’s v Hampstead and the territorial scope of interim orders in Scotland

Background

Earlier this year, we published a case update regarding the legal proceedings brought by William Grant & Sons, the owners of Hendrick’s Gin, against Lidl for trade mark infringement and passing off in relation to Lidl’s own brand of gin - Hampstead Gin.

On 25 May 2021, the Court of Session issued its written decision in the case in which Lord Clark granted interim interdict in favour of William Grant & Sons therefore, requiring Lidl to remove Hampstead Gin from its supermarkets in Scotland on the basis of the claim for trade mark infringement. The territorial scope of the interim interdict was restricted to Scotland only as Lord Clark felt “unable to conclude” that he could make an interim order with a territorial scope beyond Scotland.

Both parties appealed the original decision to the Inner House of the Court of Session and a judgment was given on the appeals at the end of July 2021.

Lidl’s Appeal

Lidl appealed on the grounds that the judge had made a fundamental error, as the Hendrick’s trade mark was in relation to the design of a clear or white bottle. It was claimed that the sales in a dark bottle did not create goodwill and reputation in the trade mark which featured a white or clear bottle.

This submission was rejected on the basis that no colour was expressly specified in the registered trade mark. It was held that where there is no colour specified in the trade mark, extensive and consistent use of a particular colour can result in the colour becoming associated in the mind of a significant portion of the public with the trade mark. This means that use of the same dark bottle by Lidl could be considered as taking unfair advantage of the trade mark.

William Grant & Sons’ Cross-Appeal

William Grant & Sons cross-appealed on the basis that the scope of the interim interdict should have been extended beyond Scotland, as the court did have the authority to do so. 

In considering William Grant & Sons’ grounds for appeal, the court started by pointing out that the issue of jurisdiction in infringement proceedings is determined by the provisions of the Civil Jurisdiction and Judgments Act 1982. In terms of the 1982 Act, jurisdiction can be created in two ways. Firstly, if the defender is domiciled within the relevant jurisdiction (either having its registered office or a place of business in Scotland). Secondly, if the infringement is said to take place in that jurisdiction (i.e. in Scotland).

Accordingly, the Scottish courts have jurisdiction over an infringement wherever it occurs if the defender is domiciled in Scotland. Further, if an infringement takes place in Scotland, the Scottish courts will have jurisdiction, regardless of where the defender is domiciled. The court explained that it would not have jurisdiction if both the defender was domiciled out with Scotland and the infringement happened out with Scotland. The courts in England would normally take a similar approach and decline jurisdiction.

In this case, as Lidl are domiciled in Scotland, and also England and Wales, William Grant and Sons had the choice to proceed with the action in any of these jurisdictions.

The court noted in its decision that English courts have commonly granted injunctions against activities happening out with England and that the same approach is appropriate in Scotland. The court also referenced the fact that there were no parallel proceedings raised by William Grant & Sons in England. Therefore, the Inner House allowed the appeal from William Grant & Sons and extended the territorial scope of the interim interdict to have UK-wide effect.

Comment

This decision by the First Division of the Inner House of the Court of Session is important in terms of clarifying the scope of interdicts which the Scottish courts can order. It is now clear that interim orders granted in Scotland can have extra territorial application to the rest of the UK. This judgment aligns Scotland with the approach taken in the English courts in granting UK-wide injunctions.

It will be interesting to see if this decision opens the floodgates for many more Scottish IP actions.  MacRoberts IP litigation team are well placed to advise clients on all aspects of infringement disputes and litigation in Scotland.

You can read the full decision here.

This article was co-written by Clare Tuohy, Trainee Solicitor.

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