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In February 2020, the Claimant Thatchers, the largest family run independent cider producers in the United Kingdom, released its new product, Thatchers Cloudy Lemon Cider. This was sold in individual 440 ml cans and in four can packs wrapped in cardboard packaging, both registered under a trade mark in respect of “Cider; Alcoholic beverages, except beer”. The trademark was shown on the front and rear of each can with the cardboard packaging displaying the trademark on the front, rear and top.
The Defendant, Aldi, in May 2022 launched its new product called Taurus Cloudy Lemon Cider, which was sold in four 440ml can packs in cardboard packaging similar to the design of Thatchers Cloudy Lemon Cider. The Aldi product was released with a design which appears on the front and rear of each can alongside a panel containing information about the product. This was also almost identically replicated on the front of the cardboard packaging and partly reproduced on the back of the packaging, alongside an information panel and bar code.
Aldi is well known in developing Aldi own products after identifying a “benchmark” product, which is typically the market leader. The intention is to deliver a product which is of the same or better quality of the benchmark product. In this instance, Aldi chose Thatcher’s Cloudy Lemon Cider to be its benchmark product, not just in the taste but also in the design of the packaging, which Aldi clearly used as a reference point.
On 22 September 2022, Thatchers commenced proceedings against Aldi for infringement on the trademark in accordance with sections 10(2) and (3) of the Trade Mark Act 1994 in the Intellectual Property Enterprise Court. On 12 February 2024, HHJ Melissa Clarke dismissed Thatcher’s claim as it was concluded that there was no evidence that any consumer would believe the Aldi product has been manufactured, licenced or approved by Thatchers, resulting in no likelihood of confusion. Accordingly, Thatcher’s claim in passing off failed.
Following this, Thatchers appealed the decision. This case attracted attention amongst marketeers and professionals in who criticised a failure to protect brand owners against look alike packaging. Others, however, have praised the decision arguing that it is favouring competition amongst brands which then will result in cheaper prices for consumers.
Thatchers appealed against the dismissal under section 10(3) which established that in order for there to be an infringement, nine conditions must be satisfied. These are:
- the trademark must have a reputation in the UK;
- there must be use of a sign by a third party within the UK;
- the use must be in the course of trade;
- it must be without the consent of the proprietor of the trade mark;
- it must be a sign which is identical or similar to the trademark;
- it must be in relation to goods or services;
- it must give rise to a link between the sign and the trade mark in the mind of an average consumer;
- it must give rise to one of three types of injury a) unfair advantage taken of the distinctive character or repute of the trademark, b) detriment to the character of the trade mark and c) there is a detriment to the repute of the trade mark; and
- it must be without due course.
Following this, Aldi did not dispute that requirements (2), (3), (4) and (6) were satisfied. The relevant conditions are that (4) there is a link between the two products for an average consumer; (8) a) that there is an unfair advantage and c) that there is a detriment to the repute of the trade mark. Thatchers were refused permission to appeal on (8) b) which was not opposed by Aldi who stated that if an unfair advantage or detriment to repute were to be established, there would be issues in (9) that it must be without due course.
The fourth condition asks if there is a link between the two products in the mind of an average consumer who is well informed, and reasonably observant. Aldi challenged the judge’s finding that there would be a link between the sign and the trade mark, despite there being evidence including social media comments which showed consumers were being reminded of the trade mark, on seeing Aldi’s product. In addition, the judge said that if a consumer were to drink the Aldi product and dislike the taste, they would therefore be far less likely to purchase the Thatchers product sold under the Trademark. Therefore, Aldi’s argument was not successful and the judge concluded that there was a link.
Section 8)b) asks if there was an unfair advantage outlined inL’Oréal SA v Bellure. Thatchers challenged the judges’ decision of the degree of similarity between the sign and the trade mark being “low”. Thatcher’s first argument was that the judge was wrong to hold that there was a “point of difference” between the trade mark and the sign was that the trademark was two dimensional, whilst the sign was three dimensional. It was established that the Thatchers’ product had the trademark printed on the front and rear of the cans, as well as the front, rear and top of the packaging.
Thatchers also contended that the judge’s analysis of Aldi’s intention was flawed as the judge confused and failed to distinguish between the intention to take advantage of the trade mark and the intention to deceive the average consumer.
In conclusion, Thatcher’s appeal against the judge’s dismissal of the claim under section 10(3) found that Aldi had infringed on the trade mark in accordance with this provision. I find this to be a fair outcome as Aldi has clearly taken advantage of Thatcher’s product in order to sell their own product which is similar in design and service.
Samuel Jenkins is a Third Year student Law student at Solent University and works every Wednesday at both https://lawdit.co.uk/ and https://trademarkroom.com/
