Interdict interdict granted in intellectual property dispute concerning lookalike gin products sold by supermarkets

Ampersand’s Usman Tariq appeared as junior counsel with the Dean of Faculty Roddy Dunlop QC in a high-profile intellectual property dispute concerning lookalike products sold by supermarkets.

They acted together with Burness Paull LLP for William Grant & Sons, the owner of the famous Hendrick’s gin, in proceedings against Lidl in relation to the sale of Lidl’s own-brand Hampstead gin. The Court of Session granted William Grant & Sons an interim interdict which prevents Lidl from selling Hampstead gin during the course of this action.

William Grant & Sons are the owner of a trade mark in the shape of the Hendrick’s gin bottle, bearing a diamond-shape label, which is registered in class 33 for alcoholic beverages. Hendrick’s gin is bottled in a dark brown/black and opaque, apothecary-style bottle bearing a diamond shaped label.

Lidl had sold Hampstead gin in its stores for at least ten years. In late 2020, Lidl re-designed the shape and label of Hampstead gin. The re-designed bottle and label of Hampstead gin was found to be similar to the Hendrick’s trade mark.

Lord Clark held that there was a prima facie case under section 10(3) of the Trade Marks Act 1994. He noted that there was a reasonable prospect of William Grant & Sons showing that Lidl intended to benefit from the reputation and goodwill of the Hendrick’s trade mark; “it is difficult to view the re-design, including the change in colour of the bottle, as accidental or coincidental”; “it is readily to be inferred that, in taking these steps, the defenders’ plan was to increase the attraction of the Hampstead product to their customers”; and “there is some support … for the proposition of Lidl riding on the coat-tails of the Hendrick’s mark so as to benefit from its attraction and also that this could influence the economic behaviour of the defenders’ customers” (paragraphs 58 – 61).

Lord Clark also held that the balance of convenience favoured the grant of interim interdict. He did so on the basis that Hampstead gin with the re-designed bottle and label was a relatively new product whereas Hendrick’s gin has been on the market for many years and has an established reputation; the sale of Hampstead gin with the re-designed bottle and label could damage the Hendrick’s brand while the action was pending; any loss and damage to William Grant & Sons arising from lost sales and dilution of its brand would be difficult to quantify; and Lidl could use an alternative design for the bottle and label of Hampstead gin if it wished to sell the gin during the course of the action.

This action comes months after Marks & Spencer raised proceedings for trade mark infringement in the High Court in relation to its Colin the Caterpillar cake against Aldi for its Cuthbert the Caterpillar cake. While supermarkets often choose to live dangerously by copying the get-up of well-known products for their own-brand products, Lord Clark’s decision in favour of William Grant & Sons, even at this interim stage, is an important instance of the Court deciding that a supermarket may have crossed the line and infringed the trade mark of the well-known brand.

The Opinion of the Court is available here.

Some press coverage can be viewed at the following links:

Scottish IP court reform proposal

Ampersand’s Usman Tariq and Colin Hulme of Burness Paull LLP have issued proposals to reform Intellectual Property litigation in the Scottish courts. Their proposals are featured in The Times. The proposals include replicating some of the features of the IPEC in Scotland. The Law Society of Scotland, the Chartered Institute of Trade Mark Attorneys (CITMA), Copyright Licensing Agency, Intellectual Property Lawyers Association, Scotch Whisky Association, Harris Tweed Authority, the NatWest Group (formerly RBS), Sky UK, PPL and more have supported the proposals. The next step is to formally submit the proposals to the Scottish Civil Justice Council for consideration.

Usman Tariq said “IP is the most valuable type of asset in the world and there’s more innovation in IP and intangible assets than in bricks and mortar,” he argues, adding: “In Scotland, the number of applications for registered design rights, trademarks and patents went up in 2019, whereas there was generally a fall across the board in the UK. As a country we seem to be punching above our weight when it comes to innovation and that needs to be maintained into having good processes in place to protect those rights.”

A full discussion of the proposals are in an article called “The Scottish IP Court – A Case For Reform” 2020 S.L.T (2), 7.

The Times article can be viewed here (paywall).

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Ampersand Advocates Top Rankings success in latest Chambers and Partners UK Bar Guide

Ampersand has again received top tier rankings across a number of areas of practice in the latest published guide to the legal profession, Chambers and Partners UK Bar Guide 2021.

Ampersand received 58 listings across 14 areas of practice, ranking as top tier (band 1) in Clinical Negligence as a Set, and band 2 in Administrative & Public law, Civil Liberties & Human Rights, Commercial Dispute Resolution, Planning & Environment, Personal Injury and Restructuring/Insolvency as a Set. 5 members are noted as “star individuals”.

Noted as a Band 1 set for Clinical Negligence, “Ampersand Advocates retains its reputation as a market-leading stable for clinical negligence matters, garnering praise from instructing solicitors who describe it as “a well-organised stable with a good range of excellent advocates.” Its advocates continue to provide expert legal advice and representation to both pursuers and defenders in a wide range of disputes, including claims relating to birth and catastrophic brain and spinal injuries. Members are well versed in cases arising from alleged failures in diagnosis and surgical errors, and regularly appear at fatal accident inquiries. The stable also houses considerable expertise in multi-party actions stemming from the use of medical equipment, and several of its advocates have recently been involved in the Scottish Mesh Litigation, a class action in which over 500 claims were brought against the NHS in connection with allegedly defective vaginal mesh.”. Our rankings include 2 “Star Individuals”, Maria Maguire QC and David Stephenson QC, with 9 further silks and 6 juniors also ranked – Simon Bowie QC, Jamie Dawson QC, Simon Di Rollo QC, Una Doherty QC, Lisa Henderson QC, Vinit Khurana QC, Geoffrey Mitchell QC, Graham Pimrose QC, Lauren Sutherland QC, Fiona Drysdale, Mark Fitzpatrick, Archie MacSporran, James McConnell, Paul Reid and Phil Stuart.

Band 2 listings include Administrative & Public Law where Ampersand is praised “houses highly praised practitioners who are skilled at acting in public law cases involving significant constitutional and human rights issues. They frequently appear before the highest courts in the UK and the EU.” The rankings include “Star Individual” Aidan O’Neill QC, along with Douglas Ross QC, Laura-Anne van der Westhuizen and Paul Reid.

In Civil Liberties & Human Rights Ampersand is noted as a “highly regarded civil liberties and human rights stable, known for representing both private individuals and public bodies in significant proceedings. Practitioners at Ampersand are regularly instructed by the government and the Equality and Human Rights Commission.” The rankings include Aidan O’Neill QC and Douglas Ross QC.

In Commercial Dispute Resolution Chambers state Ampersand is “well renowned for its consistent involvement in high-profile commercial disputes. The stable offers a large team comprising highly rated advocates at the senior and junior level. The advocates are instructed on behalf of corporations and financial institutions and are involved in a variety of related areas of practice including intellectual property and insolvency.” The rankings include Robert Howie QC, Craig Sandison QC, Ross Anderson, Graeme Hawkes, Giles Reid, Paul Reid, Usman Tariq and Tim Young.

Within Personal Injury Ampersand “houses a number of dedicated senior and junior advocates, and instructing solicitors praise the “strength and depth of counsel available at the stable.” Members act for both pursuers and defenders, including several major insurers, in the full range of claims, and offer considerable expertise in the handling of catastrophic injury cases arising from RTAs and workplace accidents. The team is also well regarded for its expertise in complex product liability and occupier’s liability disputes and matters involving accidents abroad. The stable’s tenants are regularly called upon to appear in Fatal Accident Inquiries, where they have experience of acting for government agencies, health boards and local authorities.” Rankings include “Star Individuals” Maria Maguire QC and Graham Primrose QC with other ranked Dorothy Bain QC, Isla Davie QC, Simon Di Rollo QC, Lisa Henderson QC, Douglas Ross QC, Chris Marney and Louise Milligan.

Ampersand’s strong Planning & Environment team was recognised as “well regarded for the complex planning and environmental work undertaken by its advocates. Members of the stable regularly act in judicial reviews and challenges to planning permissions and frequently act on behalf of developers, objectors, public sector bodies and energy companies. Members are regularly engaged in high-profile matters, including the public inquires into the development of the former Royal High School in Edinburgh and the proposed Coul Links golf course development. One source says: “The chambers is excellent in terms of the calibre of advocates.””. Rankings include Malcolm Thomson QC as “Star Individual”, Marcus McKay QC, Ailsa Wilson QC and Laura-Anne van der Westhuizen.

Within Restructuring/Insolvency “Ampersand Advocates is well regarded for its handling of a wide range of restructuring and insolvency matters. The stable’s advocates are frequently instructed to represent administrators, companies, banks and insolvency office holders in complex claims involving allegations of wrongful trading and breach of fiduciary duty, among other matters. Members have experience of appearing in both domestic and cross-border matters, and are regularly called upon to act for and advise their clients on both contentious and non-contentious insolvency cases.” Rankings include Robert Howie QC and Usman Tariq.

There are individual rankings in Real Estate for Robert Howie QC, Craig Sandison QC, Ross Anderson, Giles Reid and Tim Young; Agriculture and Rural Affairs for Laura-Anne van der Westhuizen; Employment for Russell Bradley, Information Technology and Intellectual Property for Usman Tariq; Professional Negligence for Chris Marney and Paul Reid; and Tax for Ross Anderson.

The Ampersand clerks receive wide praise being described as “professional, friendly and accommodating at all times…. very responsive… they make every effort to accommodate almost impossible demands” and that Ampersand “is an extremely well run and efficient stable”.

The full rankings can be viewed on the Chambers and Partners website here.

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Mark Boni

Mark Boni called to the Bar in 2020, having qualified as a solicitor in 2014. Since 2022, Mark has been ranked by Legal 500 as a tier 2 leading junior in commercial disputes.

Mark has experience in a wide range of commercial and private law litigation, with a particular interest in contractual and property disputes, prescription, personal insolvency and private client litigation.

As a solicitor and latterly associate with a well-known litigation firm, he appeared regularly for pursuers and defenders in the Sheriff Courts conducting proofs and debates, procedural hearings, opposed motions and interim orders hearings. Mark also has experience in alternative dispute resolution, including arbitration and mediation.

Mark has experience, both as a solicitor and at the Bar, of litigating in the Sheriff Courts, Sheriff Appeal Court, Lands Tribunal, Court of Session (Outer and Inner Houses) as well as the UK Supreme Court. Mark also has experience in alternative dispute resolution, including arbitration and mediation.

Whilst devilling, Mark was a Lord Hope Scholar and was involved in a variety of complex and high value cases, including professional negligence claims and intellectual property actions.

Since 2012, Mark has tutored part-time at the University of Edinburgh. He presently tutors “Commercial Law” and “Contract and Unjustified Enrichment” and previously tutored “Public Law of the UK and Scotland” and “Public Law and Individual Rights”.

Mark wrote the reissue edition of “Prescription and Limitation” in the Stair Memorial Encyclopaedia (published 2023).

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Emma Busby

Emma Busby joined Ampersand as a Deputy Clerk in February 2020. Prior to joining us, Emma worked for the Member of Parliament for Edinburgh South and brings with her experience of working in a fast paced environment and front facing administrative role. Emma’s personable outlook and efficient work ethic makes her a great asset to the clerking team.

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Scottish Arbitration Centre holds annual training day

The Scottish Arbitration Centre held its annual arbitrator training day in Edinburgh on 7 November, which featured Ampersand’s Usman Tariq.

The event, which was sponsored by FTI Consulting, saw delegates from various professions attend, with speakers including Sir David Edward QC, Honorary President of the Centre; Lindy Paterson QC, Chair of Domestic Subcommittee of Centre’s Arbitral Appointment Committee and Barrister at 39 Essex Chambers; Leigh Herd, Honorary Secretary of CIArb Scottish Branch; Craig Tevendale, Partner, Herbert Smith Freehills; and Fiona Menzies, Business and Development Manager at the Centre.

The focus for the afternoon workshops was intellectual property disputes, delivered by John Mackenzie, Partner, Shepherd and Wedderburn, and Usman Tariq, Advocate at Ampersand Advocates. They said:

“We were delighted to deliver a workshop at the Scottish Arbitration Centre’s Annual Arbitrator Training Day to promote the use of arbitration in IP / IT disputes.

While IP disputes have traditionally been litigated in the courts, there is increasing use of arbitration for IP disputes around the world. There are several advantages of arbitrating IP disputes in Scotland which will appeal to both Scottish and international businesses.

Confidentiality and the need for an early decision from an informed decision-maker can be of paramount importance to businesses, particularly in the fast-moving world of technology. Arbitration will appeal to businesses as they can resolve their dispute without fear of putting commercially sensitive material in the public domain which can happen in court proceedings. In contrast to the trend in England, the parties retain absolute anonymity in Scotland even if court proceedings follow the arbitration. Arbitration can offer the parties control over the procedure and an earlier decision than in the court process together with extremely limited rights of appeal which provides the parties more certainty about the duration of the process and finality in the dispute. The parties also have the autonomy to choose their decision-maker and can appoint an arbitrator with the necessary expertise and qualifications for their dispute. If parties choose to arbitrate, most of the remedies that are available in court proceedings will be available to the arbitrator and the parties also retain the right to seek interim orders, such as interim interdict (an interim injunction), by making an application to the court at any time during the arbitration process. All of these factors will appeal to businesses as well as third party funders. In addition, arbitration can be particularly effective for resolving international IP disputes as it can avoid multi-jurisdictional litigation and arbitral awards can be enforced around the world.

Whilst not every IP case will be suitable for arbitration, many disputes are suitable and advisers are encouraged to consider whether arbitration offers their clients the best prospects of an efficient and beneficial outcome to their disputes.”

Andrew Mackenzie, Chief Executive of the Centre, who chaired the event, said:

“We are delighted to have hosted another successful arbitrator training day. I am particularly pleased that we continue to attract a mix of professionals to our annual event, with advocates, solicitors and surveyors exchanging experiences in best practice.

It was particularly valuable to explore the advantages of arbitrating IP disputes in Scotland, and I am grateful to John and Usman for all their input with the event. Scotland’s arbitration system has provision for breach of confidence and also anonymity for parties in respect to any reference to our Court, meaning that sensitive disputes that are subject to Scottish arbitration have the benefit of privacy, unlike in many other jurisdictions. Therefore, I hope our unique system will attract more arbitration to Scotland.”

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