The Supreme Court has brought an end to the dispute between Aldi and Thatcher’s by refusing to grant Aldi permission to appeal.
This dispute began back in 2022, when Thatcher’s brought claims against Aldi for trade mark infringement and passing off in relation to their “Cloudy Lemon Cider” product. They believed that Aldi’s “Taurus Cloudy Cider Lemon” was taking unfair advantage of the brand reputation associated with Thatcher’s “Cloudy Lemon Cider”.
Although the High Court initially ruled in favour of Aldi, the Court of Appeal later overturned this decision on the basis that it was clear that Aldi’s intention was to mimic Thatcher’s product and benefit from their brand recognition. The Court of Appeal felt that the similarities could not be coincidental because Aldi had changed the colour scheme used on their other “Taurus” products, so that this particular product was more in line with the packaging used for Thatcher’s “Cloudy Lemon Cider”.
The Court of Appeal also considered the fact that Aldi had achieved a significant number of sales in a short period of time without needing to promote the product, and there was no evidence to suggest they would have made the same sales without using similar packaging. They concluded that Aldi had been able to profit off the back of Thatcher’s investment and development of the brand, by creating a product that made customers believe it was the same as Thatcher’s, but cheaper.
Following the Court of Appeal’s decision, Aldi sought permission to appeal to the Supreme Court on the basis that the Court of Appeal had made an error by deciding that copying constituted an unfair advantage and, by doing so, had created a new wrong of “mere copying”. They also applied on the grounds that the Court of Appeal had erred in its assessment of Section 11(2) of the Trade Marks Act 1994, which outlines that a trade mark is not infringed by the use of non-distinctive elements.
The Supreme Court has refused the appeal and although they do not have to provide an explanation for their refusal, we can conclude that the Supreme Court considered there was not an arguable point of law for it to consider, effectively that they considered the Court of Appeal’s decision was founded on the correct application of the law.
This emphasises that companies should be able to prevent others from launching similar products so as to unfairly benefit from another’s success. Although there is a fine line between unfair use and fair competition, this case outlines that a strong trade mark portfolio will strengthen a party’s case in these kinds of disputes. Thatcher’s had a registered trade mark for their label mock-up for “Cloudy Lemon Cider”, and it would have been a lot harder for them to bring a successful claim without this, as it gave them rights to that specific design.
It is common for companies to only consider registering a trade mark for the company name and logo as they are the focus of the business, but it is equally important to consider whether specific products and brand designs should also be registered to strengthen the position should a competitor launch a copycat product.
If you have any questions about registering trade marks to protect your products and brands, please contact [email protected].
