Philip Warren & Son Ltd v Lidl Great Britain Ltd & Ors

Passing off requires clear and cogent evidence of an operative misrepresentation which is likely to cause material damage to the claimant’s goodwill. Mere confusion, a fleeting question about a connection, or confusion corrected before any material step is taken is insufficient.

The assessment is fact-sensitive. The court must consider the nature and extent of goodwill, customer overlap, the circumstances in which the marks are encountered, and the quality and quantity of evidence. A limited geographical spread of goodwill may suffice in an appropriate case, but it does not establish liability without proof of misrepresentation and damage. A substantial claim for historical damages or an account of profits cannot rest on speculation.

The claimant was a family butcher trading principally under the names PHILIP WARREN and PHILIP WARREN & SON. The defendants operated a national supermarket business and sold fresh meat products under the WARREN & SONS brand between 2015 and 2020.

The claimant alleged that the defendants’ use of the mark misrepresented a connection with its business and sought substantial financial relief based on historic sales. The trial concerned liability alone. The central issues were the extent of the claimant’s goodwill, whether the defendants’ use caused an operative misrepresentation to a significant part of the relevant public, and whether material damage was caused.

1. Claim dismissed. The claimant had substantial goodwill among local retail customers and in parts of the high-end wholesale trade. Its retail goodwill was mainly concentrated in Launceston and the surrounding area, with only limited goodwill elsewhere.

2. The relevant question was whether the defendants’ use of WARREN & SONS was likely to involve an operative misrepresentation to a sufficiently substantial part of the relevant public that the products were connected with the claimant, causing material damage to its goodwill.

3. Similarity between the marks was not decisive. The marks were presented differently, the products operated at different market levels, customer overlap was limited, and the context of use in Lidl stores tended to reduce the likelihood of a significant mistaken assumption.

4. The evidence of confusion was insufficient. Communications and witness evidence mainly showed consumers asking whether a connection existed, often after internet searching, rather than assuming that the products were connected with the claimant. Any misunderstanding was rapidly corrected and was not operative. The absence of complaints at the Launceston Lidl store was significant in the circumstances, although not conclusive.

5. The court applied the principles in Reckitt & Colman v Borden [1990] 1 WLR 491, including the distinction between deception and mere confusion. Evidence must be assessed as a whole, taking account of the market, channels of sale, and the cogency of the evidence. The evidence did not establish significant operative misrepresentation or material damage.

6. The suggested user-based damages or account of profits would not have been appropriate even if liability had been established. Passing off is a proportionate remedy for actual deception and does not automatically entitle a claimant to a share of profits from sales made to persons with no knowledge of the claimant.

7. The conditional counterclaim also failed. Both claim and counterclaim were dismissed.

Not stated in the judgment.