March 2024 Yet again, Aldi has found “inspiration” from branded products
Aldi’s product designers and trade mark attorneys continue to be successful in finding the right balance between gaining inspiration from branded products and copying said branded products in an effort to gain more sales based on the brand’s reputation in the market.
Background
Early in 2020 (as the Covid-19 pandemic began), Thatchers launched its Cloudy Lemon Cider, which was also registered as a trade mark in the United Kingdom. The packaging of this canned beverage is shown below:
Two years later, Aldi launched a similar cloudy lemon cider product. An example of a can (which is typically sold in a pack of 4) is shown below:
The Aldi product is sold under the brand “Taurus”, as depicted above.
Thatchers brought a claim against Aldi for trade mark infringement (under sections 10(2) and 10(3) of the Trade Marks Act 1994 (TMA)) and for passing off.
Aldi denied infringement, noting that, in any case, Thatchers’ trade mark was descriptive of characteristics of the goods being offered.
Decision
The Court noted that there were six requirements established in Sky vs. SkyKick [2018] EWHC 155 (Ch) for a claim under section 10(2)(b) TMA:
- There must be use of a sign by a third party within the UK;
- The use must be in the course of trade;
- It must be without the consent of the proprietor of the trade mark;
- It must be of a sign which is at least similar to the trade mark;
- It must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and
- It must give rise to a likelihood of confusion on the part of the public.
The Court was satisfied that only requirements (4) and (6) needed to be determined.
The overall appearance of the Taurus product was found by the Court to only share a low degree of similarity with that of the Thatchers trade mark.
The dominant features of the Thatchers trade mark were said to be “THATCHERS CLOUDY LEMON CIDER”, whereas for the Taurus product, they were said to be the brand “TAURUS” and the depiction of a bull’s head. These were found to be dissimilar, both aurally and conceptually.
Furthermore, the lemons and green leaves (used on both products) were said by the Court to have been treated differently in each case.
Concerning likelihood of confusion, the Court noted that the average consumer shopping in Aldi would be reasonably well informed and observant. They would know that Aldi sells third party brands in its stores, so they would not be surprised to see something which they might initially mistake to be the Thatchers product. However, the Court found an absence of any real evidence of direct or indirect confusion, despite the high volumes of sales of both products. The colours used on the product packaging were assessed but were considered ubiquitous to lemon-flavoured drinks in the market (regardless of evidence available showing Aldi’s designers had been specifically instructed to add lemons so that their product would be a “hybrid” of Thatchers and Taurus).
The Court therefore dismissed the claim under section 10(2)(b) TMA.
Concerning passing off, the ‘classical trinity’ from Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL applied, namely goodwill or reputation; misrepresentation leading to deception or a likelihood of deception; and damage resulting from the misrepresentation.
The Court held that there was no evidence before it to suggest a likelihood of confusion, and the Court was satisfied that there was no misrepresentation. Accordingly, the passing off claim also failed.
The findings in this case suggest that Aldi’s designers and trade mark attorneys have a very good understanding of what constitutes “inspiration” gained from a branded product and what constitutes unfair advantage gained from copying the branded product; this is a fine line well walked by Aldi.
