Haseltine Lake Kempner

Firm overview:

“Whichever way you cut it,” Haseltine Lake Kempner, “should be ranking really highly”, says a fellow trademark lawyer. The IP-focused firm represented British multinational supermarket chain Tesco in one of the most watched trademark infringement cases of 2023. HLK is the product of a 2019 merger between long-running IP firm Haseltine Lake and boutique firm Kempner & Partners. The team of attorneys and lawyers advise on clearance, registration and portfolio management, including on a worldwide basis. With an 82% success rate for IP litigation trials over the last decade, HLK is capable in trademark disputes and matters up to the High Court and the Court of Appeal. HLK’s client base includes a range of brands in the luxury, food, real estate and technology sectors.

Team overview:

In the UK, HLK’s trademark attorneys, lawyers and paralegals are based in London, Bristol and Leeds. As well as its UK team, the practice includes HL Kempner Partnerschaft, formed in 2019. With offices in England, Scotland, Germany, and the Netherlands, its presence in Europe allows the firm to advise on European trademark matters following Brexit. Richard Kempner offers an array of IP services, focusing on patent, trademark and copyright dispute resolution. Notably, Kempner advised Tesco in the 2023 matter against Lidl.

Key matters:

• HLK partner Richard Kempner represented Tesco in the significant Court of Appeal and High Court matter heard in May 2023. The matter concerned Tesco’s blue and yellow mark to highlight its ‘Clubcard Price’ discounts on certain products. Lidl brought the action against HLK’s client, alleging that the mark infringed on its blue and yellow ‘Lidl’ logo.
• Before the High Court, Tesco argued that the wordless version of Lidl’s logo was filed in bad faith. The client relied on two arguments of bad faith, first, the wordless mark had not been used by Lidl in nearly 30 years and secondly, Lidl had filed and refiled the mark periodically, with the intention to avoid an accusation of ‘non-use’, a rule that a mark can be revoked if it has not been used for five years.
• Lidl succeeded before the High Court and Tesco appealed in 2022 to the Court of Appeal, which found that Tesco’s claim had a real chance of success. In 2023, however, the matter concluded in favour of Lidl. Tesco is looking to appeal in relation to the trademark infringement and passing off claims.
• HLK advised retailer JD Sports in a worldwide trademark dispute with Chinese e-commerce company Beijing Jingdong 360 Du E-Commerce that trades from the website jd-dot-com. The dispute concerned the right to use and retail under the mark ‘JD’ in each country of the world.
• HLK served UK High Court proceedings on all the relevant defendants seeking a pan-European injunction to stop Beijing Jingdong trading in Europe under its JD domain name. HLK also brought opposition and cancellation proceedings between each party throughout the world including in the EU, US, the Middle East and East Asia. JD Sports’ goals have been fully achieved.

Clients:

JD Sports, Tesco