UK High Court dismisses Thatchers cider ‘copycat’ claims

In a recent case (67 pages / 1.39 MB), Thatchers Cider claimed budget supermarket Aldi infringed trade mark rules under the Trade Marks Act 1994 by selling a lookalike alcoholic beverage with similar colours and patterns to Thatchers’ cloudy lemon cider packaging. However, the court held that despite the similarities between the Aldi product and the trade mark, there was “no likelihood of confusion” nor did the lookalike take unfair advantage of the trade mark’s reputation.

“There is an ever-increasing presence of lookalike products on discount supermarket shelves, and this is another attempt by brand owners to tackle the issue,” Emily Swithenbank, intellectual property expert at Pinsent Masons, said. “The attempt to gain greater protection against lookalikes by registering the whole label as a trade mark, and invoking trade mark law in these cases, is one that more brands are considering. But this case will not fill them with confidence in doing so.”

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Thatchers claimed that the overall appearance of the Aldi product is highly similar to its own product label for which it has a registered trade mark. It claimed the supermarket had intentionally mimicked the appearance of Thatcher’s product and in doing so both confused consumers into believing the Aldi product was in fact Thatchers’ but also caused a link in the minds of consumers between the two to encourage customers to purchase the Aldi product. Thatchers claimed that as a result Aldi took unfair advantage of, or caused detriment to, the distinctive character and repute of its trade mark without due cause. Aldi accepted that it used the Thatchers product as a benchmark but denied infringement of trade mark laws or passing off.

The court carefully considered the industry accepted practice of ‘benchmarking’ against the market leading product, focussing on the intention of the alleged copier. It considered whether Thatchers has a reputation in the UK associated with its product label for which it has registered trade mark rights, as well as whether the design similarities would likely result in customer confusion between the branded and supermarket own products.  It also questioned whether Aldi’s use of the mark would cause the average consumer to link the products and unfairly impact the reputation of Thatchers cider.

Despite the similarities between the Aldi product and the trade mark, the court held that there was “no likelihood of confusion”, particularly in light of Aldi’s prominent ‘Taurus’ branding on its product. The court also held that there was no trade mark infringement arising from the degree of similarity and Thatcher’s strong reputation in the UK.   The court drew from its conclusions that Aldi desired not to “sail too close to the wind” to reach its finding that Aldi’s product was sufficiently different to not take unfair advantage of the reputation in Thatchers’ trade mark.

The judge held that it is permissible to seek to copy elements of another’s product, and even allow consumers to create a link between the products, while keeping a safe distance away.  The court also held that any link between the cheaper Aldi product and Thatchers’ product would not be detrimental to the trade mark’s reputation.

Despite Thatchers’ unsuccessful claim, Swithenbank said “it is not all doom and gloom for rightsholders”, adding: “This case concerns the copying of the ubiquitous, commonplace or descriptive elements of the Thatchers label. A trade mark registration for a product label incorporating much more distinctive imagery and background designs would likely fare much better in such a claim”.