The Cloudy World of Look-a-Like Products – Aldi Successfully Defends Allegations of Trade Mark Infringement

Recently the High Court of Justice of England and Wales handed down its judgment in a trade mark infringement proceeding between Aldi v Thatcher’s that had been being watched by many.

Thatchers had sued Aldi for trade mark infringement and passing off over claims that the supermarket’s Taurus lemonade brand was a copycat of its Cloudy Lemon Cider in both taste and appearance (see below).

The case had been closely followed by many brand owners who are becoming increasingly concerned by the potential damage to their brands by look-a-like products. However, as Aldi was ultimately successful in its defence in this case, the judgment reiterates the difficulties that brand owners face and the need for close scrutiny and strategic thinking when seeking to prevent a look-a-like product damaging a market leading brand.

The Decision

Ultimately, the Court ruled that there was no trade mark infringement nor passing off by Aldi. The Judge concluded that there was a “low degree of similarity” between the two products and although the Aldi packaging would “cause a link in the mind of the average consumer”, there was no likelihood of confusion. The Judge also found that the Aldi product did not take unfair advantage of the reputation of the cider company’s existing product and had been in no way “detrimental” to the reputation of the Thatcher’s existing trade mark.

Of particular note from the judgment were the following matters:

• Included within Thatchers’ arguments was a blind taste test to highlight the similarity between the two recipes and a detailed comparison of the graphics on the multi-pack packaging and individual cans themselves.
• Aldi denied all claims, stating that whilst it admits to using the Thatchers’ product as a “benchmark” there was no infringement, passing off nor intention to benefit from the Thatcher’s existing reputation.
• The Judge was satisfied by Aldi’s defence arguments ruling that “it is not surprising that both parties have used it to distinguish their lemon cider product” and the taste of the products were non-distinguishable and as such the Aldi ‘look-a-like’ was of no detriment to the reputation of Thatchers.
• The Judge also concluded that:
  • the Thatchers mark as a whole had an enhanced distinctive character and reputation;
  • Aldi deliberately benchmarked those elements of the Thatchers packaging; and
  • Consumers will make a link between the two;
  • however, the similarity between the two products was insufficient to support a finding of unfair advantage

Thatchers have given no indication of plans to appeal the decision, however, as significant weight has been placed on Aldi’s lack of intention to infringe and there was a finding that Aldi’s new packaging did not “significantly depart[s] from its house style” as the logo and name remain, it will be interesting to see if Thatchers is emboldened to do so.

By Simon Casinader and Rianna Prince