Her Honour Judge Melissa Clarke has found that Aldi’s Taurus Lemon Cloudy Cider (pictured) did not infringe the Thatchers Cloudy Lemon Cider device mark (pictured). She also rejected a passing off claim brought by Thatchers.
The case illustrates the difficulties brand owners face in bringing actions against supermarket products that they perceive as lookalikes.
What is the actual sign?
The first challenge Thatchers faced was identifying the actual sign complained of. The judge complained that Thatchers made “contradictory submissions”: the sign was said to be, variously, the four-pack and the individual can, a flat sign on either the can or the cardboard packaging, the overall appearance of the can, and the front face of the can.
Based on the particulars of claim, she concluded that “the Sign is the overall appearance of a single can of the Aldi Product, and not merely one face of it”.
Section 10(2)(b) infringement
The judge concluded that there was a low degree of similarity between the trade mark and the sign:
“Although I have found that the Trade Mark has gained some enhanced distinctiveness through use, I am satisfied that the principal dominating features of both marks are the ‘THATCHERS’ brand on the Trade Mark and the ‘TAURUS’ brand and bulls head device on the Sign which are dissimilar. Of those elements of the marks where I have found some similarity, in relation to the colour palette I am satisfied that the use of the colour yellow on both cider products and lemon products is ubiquitous, and the use of lemons and lemon leaves on lemon-flavoured beverages including lemon ciders is very common.”
Moreover, evidence of confusion was lacking.
While the sign may bring to mind the trade mark for the average consumer, this was not enough, said HHJ Clarke: “In my judgment, on a global assessment, there is no real likelihood that the average consumer, taking into account all these circumstances which are likely to operate in [their] mind and the impression that the Sign is likely to make on [them], will be confused.”
The judge found that Thatchers had a reputation throughout the UK in relation to the trade mark, and that the average consumer would call to mind the mark on seeing Aldi’s product.
However, there was no unfair advantage because she was not satisfied there was an intention to exploit the reputation and goodwill of the mark or that the use of the sign had objectively had the effect of doing so.
Having conducted a blind taste of both ciders, she rejected the argument that customers who do not like Aldi’s product would consider Thatchers’ product a less attractive proposition. Similarly, she said that there was no reason why a consumer who comes to distrust the Aldi product (because it is not made with real lemons) would subsequently distrust the Thatchers product. Therefore there was no detriment.
It was established Thatchers owns goodwill in the Sign and its trade mark (a common stumbling block in passing off cases), there was no misrepresentation. The judge noted: “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.”
The passing off claim therefore failed.
What does this mean?
Thatchers had argued that in developing its product, Aldi had used Thatchers’ lemon cider for “benchmarking” and that it had intended to copy Thatchers’ product. As the design process progressed, Aldi moved closer to the trade mark, but when the design got too close for Aldi’s legal department, it moved further away again. This may indeed have been what happened, said the judge, but she was only concerned with the final design of Aldi’s product.
Moreover, when it came to assessing unfair advantage, it was significant that Aldi made significant use of the TAURUS brand, the bulls head device and swoosh and the sign was seen in the context of the cardboard packaging and shelf-ready tray. Sales of Aldi’s product were not “astonishing”, as Thatchers’ witness claimed, but were proportionate in relation to sales of other TAURUS-branded ciders.
Trade mark cases involving supermarket own brands are often finely balanced. In developing its product and packaging in this case, Aldi appears to have stayed on just the right line of similarity/difference. That, combined with the lack of any significant evidence of confusion, saved it on this occasion but it does not mean that every lookalike passing off and/or trade mark infringement case will fail.