A recent UK trade mark judgment generated huge public interest. It was, as is so often the case in the UK, one of those classic supermarket look-alike cases. This article confines itself to the issues that we deem the most noteworthy.
The parties
The case involved the UK cider manufacturer, Thatchers Cider, and the widely known discount chain, Aldi. The details:
Intellectual Property Enterprise Court (IPEC), Thatchers Cider Company Ltd v Aldi Stores Ltd (2024) EWHC 88 (IPEC), 29 January 2024.
The facts
In February 2020 Thatchers unveiled a new cider, Thatchers Cloudy Lemon Cider. Two years later, Aldi introduced a cloudy lemon variant to its Taurus cider brand. Visuals of the two products appear below.
Yes... they do look quite similar... hence the legal proceedings.
The Case for Thatchers
Thatchers claimed that Aldi was guilty of trade mark infringement under Sections 10(2) and (3) of the UK Trade Marks Act. Thatchers also alleged that Aldi's branding amounted to nothing short of passing off.
Safe to say that many people would take the view that the brand names Thatchers and Taurus, are quite different. As for accompanying words like 'cloudy' and 'lemon', many people might say that these are simply descriptive of the product.
But Thatchers argued that Aldi had deliberately sought to create an association with the similar Thatchers product. Thatchers claimed that this took unfair advantage or caused detriment to the distinctive character and repute of its trade mark. Aldi, needless to say, denied all the allegations against its alleged misconduct.
The judgment
Judge Melissa Clark held that there was no likelihood of confusion between the two brands which was supported by the lack of evidence of any actual confusion in the marketplace. As for Aldi's use of a yellow palette with green leaves, the judge accepted that the 'colour palette is ubiquitous to lemon-flavoured drinks'.
We'll now deal with some particular issues and aspects that came up:
Bringing to mind
The judge said this: 'The fact that the average consumer may look at the sign (Taurus) and bring to mind the trade mark on the Thatchers product is not sufficient for confusion.'
Dominating features
The judge also said that the 'dominating features of both marks are the THATCHERS brand...and the TAURUS brand and bulls head device...which are dissimilar.'
The judge ruled that the case premised on Section 10(2) – the section that deals with the use of an identical or similar sign (mark) concerning identical or similar goods – had failed.
Unfair advantage and detriment
But what about infringement under Section 10(3), which deals with 'unfair advantage' and 'detriment'?
This failed too, with the judge making the point that Aldi had made a conscientious effort to keep a 'safe distance' from Thatchers. There was, said the judge, no tarnishment of Thatchers trade mark.
A blind test
An unusual feature of this case was that the judge did a blind test of the two products and accepted that they had different tastes. But not to the extent that this was likely to cause detriment to either party's repute. The judge was at pains to make it clear that this was not a case where the goods 'offered by the third party possess a characteristic or quality which is liable to have a negative impact on the image of the mark.'
Passing off
There was also a claim of passing off. According to the famous case of Jif Lemon case Reckitt & Colman Products Ltd v Borden Inc (1990) 1 All E.R.873, three things are needed to establish passing off:
- goodwill or reputation,
- a misrepresentation leading to deception or a likelihood of deception, and
- damage resulting from the misrepresentation.
The judge held that there was no misrepresentation or likelihood of confusion here, so there had been no passing off. She has this to say:
'There is no evidence before me that any consumers believe that the Aldi Product is that of Thatchers, for example, that it is manufactured, or licensed, or approved by Thatchers... I am satisfied that there is no misrepresentation that Aldi is connected with Thatchers.'
No case
The judge put this case to bed with these words: 'On balance, I am satisfied that Aldi did not develop the Aldi Product...with an intention to take advantage of the goodwill and reputation in the trade mark.'
Aldi goes for corny
Aldi was obviously delighted with the outcome. An Aldi spokesperson had an amusing official comment on this matter:
'There's nothing cloudy about this judgment. It's clear cut.'
The last word?
This is unlikely to be the end of the matter. Thatchers have said that they will appeal. So we'll probably be discussing this case again!
A great deal has been written about this judgment, view an example here.
Reviewed by Ilse du Plessis, an Executive in ENS' IP Department.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
