23/01/2025
This week, the Court of Appeal handed down its decision in the Thatchers v Aldi cider packaging case, following a two day hearing in December 2024.
The case is an appeal from the Intellectual Property Enterprise Court (‘IPEC’) and concerns a claim launched by cider company Thatchers, alleging that discount supermarket Aldi infringed its registered trade mark for the get up of its Thatchers Cloudy Lemon Cider.
In what was an interesting case before IPEC, involving cider taste testing, none of Thatchers’ claims of trade mark infringement or passing off succeeded. But before the Court of Appeal, Thatchers has enjoyed a reversal of fortune as the Court of Appeal found that Aldi’s Taurus lemon cider does take unfair advantage of the reputation of Thatchers’ trade mark. The IPEC decision was only appealed in relation to the reputation-based grounds of infringement.
Background
Thatchers is the owner of UK Trade Mark Registration Number UK00003489711 (shown in the table below). The Trade Mark is for the get up or appearance of Thatchers Cloudy Lemon Cider product and is registered for “cider” amongst other goods. Thatchers uses this trade mark on the front and rear of each can of its Cloudy Lemon Cider product and also in slightly modified form on the front, rear and top of the cardboard packaging of the four can packs.
In May 2022, Aldi launched, as a seasonal product, the cider product shown in the table below. The cider fell under Aldi’s Taurus range of ciders.
The Thatchers Cloudy Lemon Cider marked Thatchers’ first departure from apple based ciders. It’s overall look was therefore deliberately different to the existing products in the Thatchers range of ciders.
Aldi’s product also departed from the usual appearance of the products in its Taurus cider range. The Taurus ciders typically had a predominantly black background with Taurus appearing in white font and an accented colour appearing next to the curved lines on the right side of the can or bottle, depending on the flavour of cider. In evidence before the IPEC, it was shown that Aldi had used the Thatchers Cloudy Lemon Cider product as a benchmark during the design process for its lemon cider product.
Before the IPEC, the judge found that there was only a low degree of similarity between the Thatchers’ Trade Mark and Aldi’s product, largely because of the different textual elements included in each. From the Particulars of Claim, the judge had understood the infringing sign that Thatchers was complaining of as the “overall appearance of a single can of the Aldi Product, and not merely one face of it”. This meant that the judge assessed the entire can of the Aldi product, and also treated the sign complained of as a three-dimensional product. In assessing the Thatchers’ Trade Mark (the two-dimensional representation of the graphics that appear on the Thatchers Cloudy Lemon Cider products) and the Aldi product (the can), the judge found, that whilst there are elements of similarity, there were dissimilarities between the dominant elements THATCHERS and TAURUS, along with other textual elements contained in the respective marks. The judge also found that the style and arrangement of the lemons and leaves were quite different.
The IPEC judge did find that the Thatchers Trade Mark enjoyed an enhanced level of distinctive character and reputation, but the finding of a low level of similarity between the Thatchers’ Trade Mark and the Aldi product, coupled with finding that the elements which were similar were descriptive or commonplace (for example, the use of lemons on lemon-flavoured products), the judge found that there was no likelihood of confusion or an unfair advantage or detriment to the reputation of the Thatchers Trade Mark. Thatchers’ claim of passing off also failed.
The appeal
The case on appeal only concerned the ground of infringement under section 10(3) of the Trade Marks Act – i.e. the claim that Aldi’s product took unfair advantage of, or caused detriment to, the reputation of the Thatchers Trade Mark.
There was no dispute that the Thatchers Trade Mark enjoyed a reputation in the UK, by virtue of the marketing and sales of Thatchers’ Cloudy Lemon Cider.
The first point of contention on appeal was the definition of the infringing sign and the similarity of that sign with the Thatchers Trade Mark. The Court of Appeal first found that, contrary to the view of the IPEC judge, the sign being complained of by Thatchers was ““the graphics on the cans and on the cardboard 4-can pack” of the Aldi Product, not the Aldi Product itself.”
Thatchers challenged the finding of low similarity between the Thatchers Trade Mark and the graphics on the Aldi product. Thatchers argued that the IPEC judge was wrong to find “a point of difference” because the Thatchers Trade Mark is two-dimensional whereas the Aldi product (which, as a whole, was being treated as the infringing sign) is three-dimensional. The Court of Appeal held that trade mark infringement must be considered on the basis of notional and fair use of the trade mark which is allegedly being infringed. How the proprietor of the trade mark (Thatchers) has used the trade mark – i.e. on a cider can – is usually the “paradigm example” of notional and fair use. Accordingly, the fact that a registered trade mark is two-dimensional but the infringing product is three-dimensional should not be a point of difference.
Thatchers also argued that the IPEC judge was wrong to simply use the same assessment of similarity for the reputation-based grounds as had been used under the likelihood of confusion ground. The Court of Appeal held that there was nothing wrong with this “short-cut” but care must be taken to not allow an assessment under reputation-based grounds to be conditioned by factors which are only relevant to a likelihood of confusion assessment.
The Court of Appeal found that the IPEC judge should have found the level of similarity to be higher than they did.
The next issue to be addressed was Aldi’s intention and whether this was relevant in an objective assessment of unfair advantage. Whilst Thatchers did not claim that Aldi intended to deceive consumers, it did claim that Aldi intentionally set out to create a product that consumers would link to the Thatchers Trade Mark; a link from which Aldi would benefit. The Court of Appeal found that the appearance of Aldi’s Taurus lemon cider was “a manifest departure from the house style” of the other Taurus products, contrary to the finding of the IPEC judge. The Court of Appeal therefore found it necessary to reasses Thatchers’ allegation of Aldi’s intention, finding that “it is plain from a comparison between the Sign [the graphics on the Aldi Product] and the Trade Mark [the Thatchers Trade Mark] that the former closely resembles the latter.” The Court of Appeal noted that examples of third party lemon-flavoured products shown in evidence demonstrate that it is possible to convey the message that a product contains lemons or is lemon-flavoured without so closely resembling the Thatchers Trade Mark. The Court of Appeal remarked that “the resemblance cannot be coincidental”, and this finding was reinforced by Aldi’s departure from the Taurus house style and the benchmarking of Thatchers’ Cloudy Lemon Cider in Aldi’s design process.
It was left to assess whether Aldi had taken unfair advantage of the reputation of the Thatchers Trade Mark. The Court of Appeal concluded that there had been an unfair advantage gained by Aldi. The sales of Aldi’s product had been significant, in a short period of time and despite no promotion by Aldi. This, coupled with the Court of Appeal’s finding that the graphics on the Aldi product closely resemble the Thatchers Trade Mark, led the Court of Appeal to reach the “inescapable conclusion” that Aldi had intended to cause consumers to be reminded of the Thatchers Trade Mark to convey to consumers that the Aldi product was “like the Thatchers Product, only cheaper”. The fact that Aldi did not intend consumers to be deceived or confused did not detract from this finding.
The Court of Appeal did consider whether there had been any detriment caused to the repute of the Thatchers Trade Mark, on the basis that Thatchers’ Cloudy Lemon Cider contains real lemon juice, whereas Aldi’s product does not and instead contains citric acid and natural lemon flavour (and this was not clear to consumers from the information contained on the Aldi product). The Court of Appeal found that there had been no detriment to repute. There was no evidence that consumers would view the Thatchers Trade Mark less favourably as a result of finding that there was no real lemon juice in the Aldi product. Moreover, the Thatchers Trade Mark includes the words “made with real lemons”, which would allow consumers to draw a distinction between the Thatchers Trade Mark and the ingredients in the Aldi product, should they wish to investigate further.
Aldi had pleaded a defence under section 11(2)(b) of the Trade Mark Act, on the basis that the part or parts of the graphics on Aldi’s product which give rise to similarity with the Thatchers Trade Mark are descriptive or non-distinctive. This defence was dismissed, with the Court of Appeal holding that it is “illegitimate” to dissect Aldi’s infringing sign into constituent elements in order to try and apply the defence to the whole of the infringing sign.
According to a spokesperson speaking to the BBC, Aldi intends to appeal the finding that it took unfair advantage of the Thatchers Trade Mark, so this may not be the end of this dispute.
Take-home considerations
This case highlights the tensions between the interests of brand owners and competition on the market in the case of look-alike or copycat products. We have seen that it can sometimes be difficult for brand owners to combat look-alike products if there are enough differentiating features and if brand owners do not have sufficient trade mark protections in place.
So how do brand owners best protect against look-alike products with dupe or dopycat packaging or labelling? This case makes it clear that there is benefit in registering the appearance or get up of a product, rather than just the word mark or logo.
In this case, had Thatchers not registered the get up of its Cloudy Lemon Cider, it would have been left relying on word or logo marks (where TAURUS is clearly distinguishable from THATCHERS) or it would have had to rely only on passing off. Thatchers’ passing off claim failed before the IPEC. It can be difficult with look-alike products to prove that consumers are misled or that there is a misrepresentation that causes them to believe that the defendant’s product originates from or is linked with the trade mark proprietor. In this case, consumers were not deceived into thinking that Aldi’s product originated from Thatchers. Rather, Aldi’s product intended to call to mind the Thatchers Trade Mark and position the Aldi product as a similar but cheaper alternative. This is what caused the finding of unfair advantage and in order to plead trade mark infringement on the basis of unfair advantage, you must have a registered UK trade mark with a reputation acquired through use in the UK.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
