In the UK, brand owners have increasingly come to see supermarkets, and in particular the German discounter Aldi, market and sell competing supermarket own brand products, bearing labelling and packaging which (at the very least) ‘winks at’ (if not intentionally mimics) the appearance of brand owners’ products.
Successful attempts to prevent such activity have been rare.
The infamous Penguin v Puffin litigation took place over 25 years ago (when the English Court held that the packaging for Asda’s Puffin chocolate biscuits was similar in appearance to the packaging for United Biscuits’ Penguin chocolate biscuits and contrary to the law of passing-off). Since then such activities have intensified.
Many brand owners are unwilling to take on the ‘mouths that feed them’, for fear that if they object the supermarket in question will delist the brand owner’s goods. In other words, the brand owners need the supermarkets more than the supermarkets need the brand owners’ goods.
But is this pernicious behaviour about to end?
A claim currently proceeding through the English Court system, brought by Thatchers Cider Company against Aldi Stores, is one worth keeping an eye on.
Since February 2020, Thatchers have sold in the UK a cloudy lemon cider product with the following packaging design, which it has registered as a UK trade mark:
Thatchers claim the product has been highly successful, such that the packaging (and hence the registered trade for the packaging) has acquired a reputation in the UK.
Thatchers object to the appearance and sale by Aldi, since 2022, of the following cloudy lemon cider:
Thatchers claim the overall appearance of the Aldi product is highly similar to that of the Thatchers product sold under the registered trade mark and that it is far more similar in appearance than other third party cloudy lemon products on the UK market. Further, in adopting the appearance of the Aldi product, Aldi intentionally set out to cause a link in the minds of consumers between the Aldi product and the Thatchers product, in order to encourage customers to buy the Aldi products and thereby benefit from that link.
Thatchers are asserting that what Aldi has done is, inter alia, contrary to s.10(3) of the Trade Mark Act 1994.
Pursuant to s.10(3) of the Trade Mark Act 1994, a person can infringe a registered trade mark if they use, in the course of trade, in relation to goods or services, a sign which is identical with or similar to a registered trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
No misrepresentation or likelihood of confusion is necessary to succeed with a s10(3) infringement claim. In other words, consumers don’t need to be confused into thinking that the Aldi product is the Thatchers product, or that Thatchers is in some way involved in its production.
Amongst other things, Thatchers allege that the appearance of the Aldi product ‘free-rides’ off the reputation of Thatcher’s registered trade mark, in order to benefit from its power of attraction, fame and/or prestige, exploiting the marketing effort expended by Thatchers and transferring the image of the Thatchers cider product and registered trade mark to the Aldi product and its appearance. In other words, the similarity in appearance is intended by Aldi to make its product more attractive to consumers, so as to influence their economic behaviour away from the Thatcher product and towards the Aldi product.
If the Court agrees with Thatchers, Aldi will be injuncted and prevented from using its current packaging design for its cloudy lemon cider product.
Depending on the outcome of the case, the best strategy for brand owners may be to register the visual appearance of the packaging of their goods as registered trade marks and then to pursue infringement proceedings (pursuant to s.10(3) of the Trade Mark Act 1994) against supermarkets (or others) who decide to produce ‘unnecessarily similar’ looking packaged goods.
We will report as and when the first instance judgment is handed down by the Court in the Thatchers case, hopefully within the next 6-12 months. Perhaps the judgment will be a game changer and will open the floodgates for more cases to be brought against supermarket ‘look-a-likes’. Or perhaps it will just further cloudy the issue…
For more information, please contact Carl Steele.
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