Lord Clark awarded an interim interdict on Tuesday to William Grant and Sons Irish Brands Ltd – the makers of Hendrick’s gin.
The firm instructed lawyers to go to the Court of Session in Edinburgh as it believed the retail giant’s ‘Hampstead gin’ brand resembled their own product.
William Grant and Sons launched the legal action after the supermarket redesigned the Hampstead gin bottle to resemble the ‘apothecary-style bottle’ used by Hendrick’s.
Wiliam Grant’s legal team also argued the redesign also changed the colour of the diamond-shaped label from white to a similar pale colour used on the bottle in the Hendrick’s trademark.
They argued the look of the label was changed to look like the Hendrick’s label and the bottle was in a darker colour of bottle – just like Hendrick’s.
In addition, it changed the look of the label to include certain similarities to the Hendrick’s label. The re-designed version was in a darker colour of bottle, replicating the famous dark brown/black colour used by Hendrick’s.
The lawyers also said the redesign contained images of cucumbers – and this ‘alluded’ to the fact that Hendrick’s was unique in being served to drinkers with cucumbers.
They also pointed to comments made on social media in which people remarked on the similarities between the two products.
William Grant’s lawyers asked for a temporary order that would force Lidl to stop selling the redesigned Hampstead gin.
The court heard how the firm wanted the order to be granted because it feared that sales of Hendrick’s gin could be harmed from the sale.
Lord Clark agreed and said the drinks firm’s legal team showed that its clients had a case that Lidl breached section 10 (3) Trade Marks Act 1994.
In a written judgement issued on Tuesday, Lord Clark wrote: “I accept that the pursuer in the present case has not (as yet) provided a sufficient basis to show a reasonable prospect of success in establishing a change in the economic behaviour of the average consumer or a serious likelihood that such a change will occur in the future.
"I do, however, recognise that there is at least some risk to the pursuer of harm to the brand.
“I take that factor into account and find that there is a reasonable prospect of success for the pursuer in showing that the defenders intended to benefit from the reputation and goodwill of the pursuer’s mark.
“Whether or not there was a deliberate intention to deceive, there is a sufficient basis for showing that there was an intention to benefit. It is difficult to view the re-design, including the change in colour of the bottle, as accidental or coincidental.”
The action brought by William Grant follows an action brought last month to the English high court by Marks & Spencer against Aldi.
M&S claim that Aldi was breaching its intellectual property rights by selling its Cuthbert cake. The firm claim the supermarket was breaching its Colin the Caterpillar trademark.