July 2017. Supermarket chain Lidl was sued in the US in June by retailer Kroger for the use of the name ‘Preferred Selection’ for its foods. According to Kroger, Lidl is infringing its trademark rights to the name of its ‘Private Selection’ house brand.
Kroger, a chain of more than 2000 stores in the US, has held registration for its Private Selection trademark in the US since 2003. The company contends that consumers will confuse the Private Selection and Preferred Selection trademarks, which will diminish the power of the Private Selection trademark.
The question is how strong Kroger’s claim is. Naturally, the combination of two general terms, ‘Private’ and ‘Selection’ is barely distinctive for foods, if at all. If a supermarket in Europe were to apply for trademark registration for the name Private Selection, it would be bound to be rejected due to a lack of distinctive capacity. Of course, such a trademark could acquire distinctiveness through long-term use, but even then, the scope of the protection would remain very limited. Whether you can then stop the non-identical and purely descriptive name ‘Preferred Selection’ seems very doubtful to us.