In another round of Brand v Copycat, the leading discounter supermarket, Aldi, has been victorious in defending a claim from Thatchers for trade mark infringement pursuant to sections 10(2)(b) and 10(3) of the Trade Marks Act 1994 and passing off in relation to its Taurus cloudy lemon cider. Aldi sought to rely on the defence under section 11(2)(b), being the use of a sign which permits the use of sign which concerns the kind or quality of goods where used in accordance with honesty practices. Thatchers claimed infringement of its device mark, as shown below, but did not claim infringement against the TAURUS product name.
This result appears to be a blow for the ongoing fight against copycat products, although the judgment makes for an interesting read on the analysis of the unfair advantage limb under section 10(3).
The Taraus brand has been used since 2013 in Aldi, and since 2020 there has always been an apple cider known as Taurus Original and a pear variant known as Taurus Pear, all of which had been strong sellers. The Aldi’s Cloudy Cider Lemon (the “Infringing Product”) was launched on 19 May 2022. The packaging on each individual can and the cardboard sleeve around the 4-pack bears a remarkable resemblance to the famous west country Thatchers Cloudy Lemon Cider and marketed at a lower price than Thatchers. Thatchers have a registered 2D device mark for the label of its cider (the “Trade Mark”), and alleged it was this trade mark that Aldi had infringed by use of the graphics on the cans and on the 4-can cardboard pack. The Judge noted that the particulars of claim did not identify with any particularity which sign Aldi was using that it complained infringed Thatchers’ Trade Mark, and concluded that the comparison was between the registered device mark and the appearance of a single can.
Thatchers Cloudy Lemon Cider – UK registered device mark
Alleged infringing Aldi’s Taurus Cloudy Cider Lemon
Determining the issues
There was no dispute that the average consumer is a retail purchaser (and presumably drinker) of alcoholic beverages such as cider and we are sure the Judge enjoyed her blind taste test of the products! Interestingly, she sought to disregard evidence that Aldi’s manufacturer had commented that the packaging was “incredibly close” to Thatchers, as this company is not the average consumer.
For the section 10(2)(b) assessment when comparing the similarity of the Trade Mark against Aldi’s cider, the Judge determined that the dominant element of the mark was the THATCHERS brand with CLOUDY LEMON CIDER beneath it. The whole lemons with large green leaves and the creamy-yellow colourway were noted as less dominant. The inclusion of “Family Cider Makers” and “Zingy and Refreshing” would not be perfectly recollected by a consumer. Likewise, “Made by real lemons” would not be called to mind. The Judge then determined that the dominant part of Aldi’s sign was the bulls head device and TAURUS, with CLOUDY CIDER LEMON being less dominant due to the reduced font size and “Made with Premium Fruit” being neither distinctive nor dominant. The ‘swooshes’ on the Aldi label are important features and a point of visual dissimilarity.
Considering the use of lemons on both labels, the Judge compared how realistic the lemons were, the number and arrangement of lemons and the stylisation of the leaves concluding that the differences decreased the overall similarity between the Trade Mark and the Infringing Product. This led to the conclusion of low overall similarity (but still similarity). However, the differences between the two and lack of actual confusion evidence were enough to close the door on this limb of Thatchers’ claim.
Moving onto the crux of this dispute – section 10(3). It was easily concluded that Thatchers’ Trade Mark did have a reputation at the relevant date, but was a link formed in the mind of the average consumer? Evidence showed that consumers referred to Aldi’s cider as a “knock off brand”, “a very good Thatchers cider rip-off” and had commented directly to Thatchers about the similarity between the two. The Judge concluded that standing in the average consumer’s shoes, on the evidence shown, the Aldi Infringing Product would be called to mind.
But did Aldi develop the Taraus cider with the intention of taking advantage of the goodwill and reputation of Thatchers’ cider? Knowing the modus operandi of discounters such as Aldi and Lidl and the numerous claims by well-known brands that have been brought against them, one would think the immediate answer is a resounding ‘yes’. But the Judge disagreed. Yes, Aldi used Thatchers to benchmark its own product and seemingly chose to depart to some extent from its usual house style branding used for its Taurus ciders. But the Judge said that the TAURUS name, the swoosh and bulls head device that remained created enough dissimilarity. The addition of lemons is an established way to communicate to consumers that a product is a lemon-flavoured beverage, and indeed this is not a usual apple cider.
And did this allow Aldi to benefit from Thatchers’ reputation and goodwill thereby taking an unfair advantage? Following the line of reasoning as outlined, the Judge said no. The judgment also confirmed that there was no detriment. Even if an Aldi consumer forms a link between the products but is not confused, and they do not like the taste of the Taurus product, this does not necessarily cause detriment to the reputation for quality or taste of the Thatchers’ cider.
The IP community presently appears rather divided on the outcome of this case, particularly following Lidl’s success against Tesco in 2023 using the unfair advantage argument regarding Tesco’s clubcard pricing. Benchmarking may be a common activity for product designers but the evidence was clear that Aldi sought to ‘benchmark’ its cider as close as possible to Thatchers which contributed to the ‘link’ being formed, although it did endeavour to adopt a sign that was a safe distance away to avoid infringement. It could be argued that the average consumer making quick decisions during a supermarket shop based on the colour and shape of recognisable products such as cans of alcohol who form a link with the well-reputed brand, but subsequently purchase the copycat, then this must be a form of unfair advantage? But the judgment seems clear that merely proving there is a link is not enough to satisfy the limb of economic damage being caused to the rights holder if there is not solid evidence of unfair advantage (such as close similarity or an uplift in sales) being taken and detriment to the brand.
On balance, the Judge has probably reached the right conclusion for the evidence before her and the particulars of Thatchers’ claim. But this provides little comfort for brands in the fight against copycats and discounters. We await to see whether Thatchers will seek to appeal the Court’s findings.
I have found that Trade Mark has reputation gained in the course of trade, and that the Trade Mark as a whole has an enhanced level of distinctiveness because of the level of that trade and the promotion and marketing of it by Thatchers, I have also found that it has a low level of similarity with the Sign, and those elements which I have found are similar are either not distinctive because they are descriptive (the text), or are ubiquitous (the limited colour palette) or are commonplace (the use of lemons and lemons on lemon-flavoured beverages). I am not satisfied of an intention to exploit the reputation and goodwill of the Trade Mark or that the use of the Sign has objectively had the effect of doing so...In these circumstances, the claim in unfair advantage fails.