Earlier this year, Lidl, a German grocery retailer opened its first US-based stores. Lidl employed the use of a newly filed trademark "PREFERRED SELECTION" which they introduced to brand their own company's products. In early July, Kroger, headquartered in Cincinnati, Ohio and one of the world's largest grocery retailers, filed a lawsuit against Lidl requesting an injunction to stop the use of the filed trademark "PREFERRED SELECTION" due to similarity to Kroger's registered trademark and brand "PRIVATE SELECTION."
Kroger alleges that the similarity between the two companies' brands creates enough confusion to the consumer to rise to the standard of trademark infringement. To succeed in this case Kroger must show that; (1) it has a superior right to use its "PRIVATE SELECTION" mark, and (2) that consumer confusion is likely; analyzed through a 9 factor test. The court will look to the following 9 factors (with no specific interest to any one of the factors), (1) strength of distinctiveness of the mark, (2) similarity of the two marks, (3) similarity of the goods and services that the marks identify, (4) similarity of the facilities that the two parties use in their businesses, (5) similarity of the advertising the two parties use, (6) infringer's intent, (7) actual confusion, (8) quality of the defendant's product, (9) sophistication of the consuming public.
When contemplating or beginning to market your products in the United States, it is important to understand your competitors and their legal (trademark) protections which may restrict your efforts. Before entering an unknown market remember to fully analyze the market and potential competitors to prevent any legal confrontations which may disrupt your initial rollout.
Bridgehouse Law is a full service law firm which works with clients when entering a new market. Feel free to reach out to us to discuss your situation and better plan for your future success.