Dupe or duplicated? Aldi loses trade mark appeal in Court of Appeal
The Court of Appeal dealt a major blow to Aldi as it ruled against the retailer in its long-running trade mark battle with cider brand Thatchers. The judgment, which overturned a previous decision last year, ruled the supermarket retailer had infringed Thatchers’ trade mark – a decision that will no doubt leave Aldi worried about the legal implications of their ‘dupe’ marketing model.
Lookalike defeat
Thatchers is just one of many companies that have challenged Aldi, but where many have failed, Thatchers has seemingly succeeded.
The case centred on similarities between Aldi’s Taurus Cloudy Lemon Cider and Thatchers’ Cloudy Lemon Cider.
The previous ruling that went against Thatchers was based on the fact that to prove infringement, it had to demonstrate that i) Aldi had taken unfair advantage of the goodwill and reputation in Thatchers’ trade mark; ii) Aldi was misrepresenting its cider in a way that is likely to lead the public to believe that the cider sold by Aldi is Thatchers’; and iii) that misrepresentation is causing Thatchers damage (i.e. people are buying Aldi’s ciders instead of theirs).
However, in the latest ruling, the panel of three judges held unanimously that Aldi had sought to convey the message that its product was "like the Thatchers product, only cheaper.”
Lord Justice Arnold said Aldi had infringed the trade mark with regards to the graphics on the cans and on the four-pack of the Aldi product, saying: "In my judgment, it is plain from a comparison between the sign [packaging] and the trade mark that the former closely resembles the latter.”
He added: "The inescapable conclusion is that Aldi intended the sign to remind consumers of the trade mark.
"To that extent, Aldi intended to take advantage of the reputation of the trade mark in order to assist it in selling the Aldi product."
The fact that “Aldi did not intend consumers to be deceived, or even confused, as to the origin of the Aldi product does not detract from this”.
Closing the legal (dupe)hole
While Aldi has made clear their own intention to appeal, this decision potentially has huge implications for companies on both sides of the ‘dupe’ argument and represents a significant development in trade mark law.
Time will tell whether other brands that have previously challenged Aldi will try again and what impact this ruling will have on their cases.
What can we learn?
In order for protection to be maintained, an owner of a trademark must be seen to be diligently taking action against those who infringe on their rights. Failure to do so can weaken your rights in the brand.
If you want to understand more about how you can prevent others from exploiting your intellectual property, our IP Health Check is designed to help you uncover your IP’s potential and vulnerabilities, giving you not only peace of mind but also information and advice you can use to build your IP strategy for future growth.
For further information on protecting your intellectual property assets, booking a free IP health check consultation or if you are unsure whether your intellectual property rights are adequately protected, contact Tom Justice using [email protected] or 0191 211 7913.