In this case, Thatchers, famous for their cider, claimed that both the get-up and graphics of Aldi’s Cloudy Lemon Cider infringed their registered trademark and amounted to passing off.
Background
Thatchers owns a trademark for cider and alcoholic beverages, comprising of an illustration of lemons and including the words "THATCHERS CLOUDY LEMON CIDER" on a yellow background.
In February 2020, Thatchers launched a canned version of its cider and branded it with the trademark. In May 2022, Aldi launched a cloudy lemon cider with a get-up comprising an illustration of lemons and a stylised bull's head in green, together with the words "TAURUS CLOUDY LEMON CIDER", on a yellow background. The relevant get-ups for the two ciders were reproduced in the court’s judgment as follows:
Thatchers claimed that:
- the high similarity between the overall appearance of the two products gave rise to a likelihood of confusion, infringing s.10(2) of the Trade Marks Act 1994;
- Aldi had intentionally set out to establish a link in the mind of consumers between the two products, and took unfair advantage of, or caused detriment to, the distinctive character of Thatchers’ trademark, infringing s.10(3) of the Act; and
- Thatchers also claimed that Aldi was passing off its product as being Thatchers’ product.
Aldi accepted that, in the development of its product, they had considered Thatcher's branding as a “benchmark”, but rejected the argument that they had infringed Thatchers’ trademark or were liable for passing off.
The Proceedings
The court had to consider whether the overall appearance of Aldi’s product was similar to Thatchers’ trademark. The court said that the correct comparison was between the trademark and an individual can of the Aldi product, rather than one face of the can or the four-pack.
Thatchers accepted that the “THATCHERS” brand was the dominant part of its trademark but claimed the “TAURUS” brand name was placed similarly to “THATCHERS”, as were other words on the can. Thatchers also argued that the visual get-up, including the pictures of the lemons and the arrangement of the text, was similar to its trademark. Thatchers did not, however, assert a monopoly on the words “Cloudy Lemon Cider”.
Decision
The court determined that the overall appearance of Aldi’s product was similar to the trademark, but only to a low degree. The court also determined that the brand names “THATCHERS” and “TAURUS” were aurally and conceptually dissimilar. The use of lemons, green leaves, and the colour yellow on cider-related products was deemed widespread and common. Therefore, there was no evidence of confusion between the two products.
In any event, the court concluded that there was no likelihood of the average consumer being confused between them. Although the court recognised that Thatchers’ product had a reputation in relation to the trademark, the court did not accept that there was an intention by Aldi to exploit the reputation and goodwill of the trademark, nor that the use of the get-up on its product had had that effect.
Regarding passing off, the court concluded that there was neither a likelihood of confusion nor any misrepresentation that Aldi is connected in trade with Thatchers. Therefore, the claim in passing off failed.
Comment
This case demonstrates how far the court will allow a supermarket to go in “benchmarking” their own-brand products against established brands, without infringing the brand owner’s intellectual property rights. This applies both when the brand owner has a registered trademark and when it does not (passing off).
However, since this decision, the Court of Appeal has handed down its judgment in Lidl Great Britain v Tesco Stores Ltd, in which it said:
“It is difficult to see how use of a sign which takes unfair advantage of the reputation of a trade mark can be with due cause, although it is perhaps easier to see how use which is merely detrimental to the distinctive character of the trade mark may be.”
It is difficult to reconcile the finding made in the Thatchers case, particularly in regards to the reputation of Thatchers’ trademark, with the Court of Appeal’s comments. It remains to be seen whether Thatchers will appeal or whether courts in the future will decline to follow that part of the judgment in light of the Court of Appeal’s comments in Lidl.
It also remains to be seen whether the Thatchers judgment will lead to an increase in own-brand products that follow this “benchmarking” development process and to more challenges before the courts.
If you are interested in enforcing your intellectual property rights to protect your brand, or have any concerns about brand protection, please do not hesitate to contact our intellectual property team or our intellectual property disputes team for advice.
This article was co-authored by Trainee Sarah Cosslett.