No Lemon-Aid For Thatchers In IPEC Judgment

• Published date: 20 February 2024
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Trademark, Trials & Appeals & Compensation
• Law Firm: Venner Shipley
• Author: Robert Peake and Benedict Sharrock-Harris

On 29 January 2024, the Intellectual Property Enterprise Court ('IPEC') delivered an important judgment on trade marks in Thatchers v Aldi¹, ushering in a new chapter in the ongoing discourse surrounding trade mark law, especially in the context of product launches of challenger 'bargain brands'. The legal battle unfolded between Thatchers, a well-known cider producer, and Aldi, the supermarket giant, as they grappled over Aldi's introduction of its own-branded cloudy lemon cider product.

¹ Thatchers Cider Company Ltd v Aldi Stores Ltd [2024] EWHC 88 (IPEC)

Background

In February 2020, Thatchers unveiled its Cloudy Lemon Cider product, featuring a distinctive trade mark that had been registered in the United Kingdom (the 'Thatchers' Mark):

In May 2022, Aldi, already an established presence in the cider market with its 'Taurus' brand, introduced its own cloudy lemon cider variant in its Taurus range:

Thatchers issued a claim in the IPEC, alleging that Aldi's product infringed its trade mark rights, alleging intentional design mimicry and taking unfair advantage of the Thatcher's Mark.

The parties' claims

Thatchers presented a multifaceted claim before the IPEC, asserting trade mark infringement under ss. 10(2) and 10(3) of the Trade Marks Act 1994 ('TMA'), alongside a claim for passing off. The core of Thatchers' argument was (i) that Aldi deliberately fashioned its product to create an association in consumers' minds, encouraging them to opt for Aldi's offering over Thatchers', and (ii) that Aldi's product took unfair advantage of, or caused detriment to, the distinctive character and repute of the Thatchers Mark, without due cause.¹ Aldi denied infringement, and invoked a defence under section 11(2) TMA (which it was ultimately unnecessary for the Court to consider).

The Court's analysis

The Court embarked on its analysis by identifying the allegedly-infringing sign in question as the overall appearance of a single can of Aldi's product, disregarding the common packaging of a 4-can pack. A detailed examination of the requirements under s. 10(2)(b) TMA ensued, wherein the Court acknowledged the fulfilment of several elements; use in the UK in the course of trade, without consent, and in relation to similar goods. However, the Court, perhaps surprisingly at first glance, deemed the overall similarity between the marks to be low, taking into account the distinctive elements embedded in each, in particular the words 'Taurus' and 'Thatchers'.²

Despite...