Introduction
In a recent “lookalike” case, which pitted a low-cost supermarket chain against a major cider producer, the Court of Appeal found that Aldi’s branding for its Cloudy Lemon Cider infringed Thatchers’ trade mark.
The marks under comparison are shown below.
| Thatchers’ registered trade mark | Aldi’s product |
 |  |
Brand owners will be pleased with this decision which might be seen as a warning to those who seek to ride on the coat-tails of market leaders and innovators, without undertaking any of the burden of innovation nor the expense of advertising and promotion.
Background
Thatchers is a well-known, family-owned Somerset cider producer. It identified a gap in the market and created a new flavour in its range, a lemon-flavoured cider. The cider was made with real lemon juice, and sweet apples replaced cider apples for a better flavour.
Thatchers spent over £2.9 million in advertising from 2020 to 2022 and sold nearly £30 million worth of cloudy lemon cider in a 2.5-year period.
Aldi identified the Thatchers product as the market benchmark in terms of (a) product and (b) branding. Although Aldi did not disclose any legal advice during the proceedings (which of course had attorney-client privilege), correspondence with a third-party design company was disclosed, which included Aldi’s instructing email “can we please see a hybrid of Taurus and Thatcher’s [sic] – i.e. a bit more playful – add lemons as Thatcher’s etc”.
It was also proven that Aldi spent next to nothing on promoting this product and yet sales seemingly outperformed Aldi’s other seasonal, flavoured ciders.
First Instance
Thatchers sued for infringement in the Intellectual Property Enterprise Court (an alternative to the High Court for IP actions), claiming (a) that the marks were confusingly similar (b) that there was unfair advantage, dilution or tarnishment and (c) that there was passing off. They lost on all three grounds.
In particular, the court judge found that the marks were not sufficiently similar. Comment was also made on the difference between the names, Thatchers and Taurus, and the descriptiveness of the common elements “cloudy lemon cider” and the depictions of lemons.
Court of Appeal
Lord Justice Arnold sitting in the Court of Appeal has now overturned that 2023 decision, finding that that the marks are similar to the extent that the infringing sign brings to mind the registered mark and that this amounts to unfair advantage.
Critical to this decision is that Aldi had identified Thatchers product as the benchmark in terms of product (ingredients and taste) and brand design. Moreover, Aldi significantly departed from its usual brand design in order to take unfair advantage and achieve substantial sales in a short period of time, without spending anything on advertising and promotion.
This is an interesting development in the case law surrounding lookalikes and may prompt brand owners to look more positively at taking action against lookalikes.
Aldi have reported that they intend to seek leave to appeal this decision.
Recommendation
Our recommendation is for brand owners to look beyond protecting just a house mark, product names and logos, and to consider protection for the overall look, get-up or packaging design of their product. Packaging designs can be protected by way of design registration or as a trade mark. Thatchers would not have won this case, without filing for protection of their packaging design, in the form of trade mark registration.
