Freeths wins trade mark infringement case for Aldi against Thatchers

National Law firm Freeths are delighted to have successfully defended Aldi against a claim for trade mark infringement and passing off brought by Thatchers in relation to Aldi’s lemon flavoured Taurus cider.

The Case Thatchers’ claimed that Aldi had infringed its trade mark by causing confusion with consumers, passing off their product as associated with Thatcher’s and taking unfair advantage of Thatcher’s reputation in the trade mark. It also made a rather unconventional claim that Aldi’s use would tarnish Thatcher’s reputation because the products tasted different, inviting the judge to taste the products! Thatchers relied upon a trade mark which reproduced the front of its cloudy lemon cider can, the “Sign”. Despite some ambiguity in the pleadings and submissions at trial, the “Sign” was ultimately deemed to be the overall appearance of a single can of the Aldi product.

Thatchers' Trade Mark	Aldi "Sign"

Thatchers’ claim relied on various grounds:

1. Section 10(2)(b) Trade Mark infringement (Likelihood of Confusion):
   1. Direct confusion – i.e. consumers would mistake the Aldi product with the Trade Mark
   2. Indirect confusion – i.e. consumers would assume that the Aldi product is manufactured by Thatchers
2. Section 10(3) Trade Mark infringement (Unfair Advantage)
3. Section 10(3) Trade Mark infringement (Detriment to Repute)
4. Section 10(3) Trade Mark infringement (Detriment to Distinctive Character)
5. Passing Off

The Decision The Intellectual Property Enterprise Court found for Aldi and dismissed all claims brought by Thatchers. The judgment includes useful judicial guidance on the assessment of unfair advantage and confirms that the practice of benchmarking a leading product is not inherently objectionable, nor does it amount to an intention to take unfair advantage. The case also follows in the footsteps of Oatly v Glebe Farm Foods [2021] EWHC 2189 (IPEC). In both cases the packaging complained of used similar descriptive and/or non-distinctive elements to those found in the claimant’s trade marks for its packaging. While this was sufficient for a finding of similarity and link, it was not enough to establish unfair advantage in either case. Key Takeaways The case is a significant decision in the context of packaging trade marks and so-called ‘lookalike’ products and confirms the long understood principle that trade mark rights cannot be used to prevent third parties from using descriptive or non-distinctive signs. The case also highlights some important practical points, including:

1. The importance of understanding the scope and limits of your intellectual property rights and being able to identify what is too close and what is merely fair competition. This is particularly the case with less conventional claims for infringement, such as the ground of unfair advantage relied upon in this case.
2. Taking care to get fundamental pleading points correct. The judgment criticises Thatchers’ failure to properly define the “’Sign” complained of in its pleadings, which added unnecessarily to the time and costs incurred in dealing with the case.

The Freeths team acting for Aldi consisted of Simon Barker (Partner), Lloyd Lane (Managing Associate), and Eleanor Bradberry (Associate).  Simon Barker, Partner and Head of Intellectual Property & Media at Freeths, said: “This is an important case and one that illustrates benchmarking of equivalent products in the market is a legitimate practice where, as the judge found in this case, Aldi did not exploit the reputation and goodwill of Thatcher’s trade mark, and nor did it intend to do so”.

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The IP team at Freeths are experts on all types of intellectual property infringement and have a track record of providing clear advice to help clients navigate infringement issues and protect their rights. Wherever you are in the process – from thinking about how to best protect your IP portfolio, developing a new product or brand, identifying a potential infringer or responding to allegation of infringement, feel free to reach out to our team.