Cincinnati, OH-based grocery retailer Kroger Company (NYSE:KR) recently filed a trademark infringement suit against German-based discount supermarket chain Lidl over a private food label. The suit, filed in the U.S. District Court for the Eastern District of Virginia (E.D. Va.), alleges both trademark and service mark infringement and is seeking to have a related U.S. trademark application filed by Lidl cancelled. The suit comes just weeks after Lidl opened its first locations in the United States.
Kroger’s suit notes that the company holds a series of trademarks covering the use of its “Private Selection” food label in retail commerce, some of which were filed as far back as 2003. These include a series of standard character marks and one illustration with words mark which are claimed for the use on goods such as bruschetta, Hollandaise sauce, fresh fruits and vegetables, meat, fish, poultry, cheese, frozen desserts and other packaged foods. Having first used the Private Selection mark as early as 20 years ago, Kroger notes that it has invested in widely advertising the food brand and that it has sold billions of units under the brand name.
Kroger alleges that Lidl, with knowledge of the Kroger trademarks-in-suit, pursued registration of a similar stylized word mark covering similar goods and services. Lidl filed U.S. Trademark Serial No. 87175637 last September which would protect the use of a stylized mark including the words “Preferred Selection” on goods including fresh and frozen meat, fish, dairy products and a variety of other grocery items. On March 21st, Kroger filed a notice of opposition with the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) seeking cancellation of the ‘637 trademark application on the grounds of priority and likelihood of confusion, dilution by blurring, and dilution by tarnishment.
Although Lidl only just entered the U.S. market in mid-June, Kroger’s complaint notes that Lidl has publicly announced plans to open 20 locations across the southeast United States this summer with additional plans to expand to 100 locations by the end of Summer 2018. By contrast, Kroger’s is reportedly the largest grocery chain in the U.S. with a total of nearly 3,000 locations in this country.
Kroger’s complaint filed in E.D. Va. lists five claims for relief including federal trademark and service mark infringement, federal unfair competition in violation of the Lanham Act, federal dilution, violation of the Virginia Consumer Protection Act, and common law trademark and service mark infringement. Kroger is seeking an injunction preventing Lidl from using the Preferred Selection mark, monetary relief including Lidl’s profits from the alleged infringing acts, compensation for corrective advertising and Lidl’s abandonment of the ‘637 trademark application.