Benchmarkalikes – Aldi's Taurus cloudy cider lemon leaves Thatchers Cider with a headache

In a recently dismissed claim¹ for trade mark infringement and passing off brought by Thatchers Cider we see so called lookalike or "copycat" products continue to provide a major headache for brands. It's the latest in a line of cases showing that the answer to issues arising from supermarkets' "inspired" alternatives, increasingly is rarely found in trade mark or passing off rights. 

Background 

Thatchers is a Somerset-based cider maker, who in 2020 launched its Cloudy Lemon Cider product in UK supermarkets (Thatchers Lemon Cider). Thatchers Lemon Cider is sold in cans decorated with illustrations of lemons, and a UK trade mark was registered by Thatchers in May 2020 for the Thatchers Lemon Cider logo (Thatchers trade mark). Thatchers Lemon Cider had achieved £20.7 million in sales from launch until September 2022. Two years after the launch of Thatchers Lemon Cider, Aldi launched a newly branded version of its own product, which is part of its "Taurus" cider range (Taurus Lemon Cider). Soon after, in September 2022, Thatchers started legal action against Aldi in the High Court for trade mark infringement and passing off. 

Thatchers' claims, Aldi's defence

In its claim, Thatchers alleged that Aldi had infringed the Thatchers trade mark and was passing off its Taurus Lemon Cider as licensed, approved by, or otherwise connected in trade with Thatchers, causing damage to Thatchers. The two trade mark infringement claims were:

• that the overall appearance of a single can of the Aldi Taurus Lemon Cider (the Aldi sign) was similar to the Thatchers trade mark, giving rise to a likelihood of confusion (under the Trade marks Act 1994 (TMA), s10(2)(b));
• use of the Aldi sign caused a link in the mind of the average consumer between the Aldi sign and the Thatchers trade mark, taking unfair advantage of, and/or being detrimental to the distinctive character and/or repute of, the Thatchers trade mark (under TMA, s10(3)), without due cause or the benefit of a defence.

Aldi's position was that it accepted that it had used the Thatchers Lemon Cider as a "benchmark" when developing the Taurus Lemon Cider, but it denied infringement of the Thatchers trade mark or passing off. 

In support of the s10(3) unfair advantage claim, Thatchers alleged that Aldi deliberately designed the packaging for the Taurus Lemon Cider to be less visually similar to other Taurus branded ciders and more visually similar to Thatchers Lemon Cider. This allegedly intentional design choice, Thatchers said, showed that Aldi intended to take unfair advantage of the Thatchers trade mark by deliberately creating a link between the products in the minds of consumers.

Thatchers also ran an argument that the taste of the Taurus Lemon Cider was different to the Thatchers Lemon Cider due to their different compositions and that this was "detrimental to the distinctive character" of its Thatchers trade mark leading to the dilution of the Thatchers trade mark. Thatchers expressed concern that its brand may be "tarnished" by consumers that did not like the taste of Taurus Lemon Cider then considering Thatchers Cloudy Lemon in a negative light. 

In its defence, Aldi argued that the Thatchers trade mark, packaging and the words "Cloudy Lemon Cider" for its Thatchers Lemon Cider were not sufficiently distinctive to be considered an "indication of origin". Aldi submitted that the lemon designs on a white background used on the Thatchers Lemon Cider can were not distinctive, and that the only distinctive element of the Thatchers trade mark indicating origin was the Thatchers brand name, which bore no resemblance to Taurus Lemon Cider. 

The decision

After she had conducted her own blind taste test, the judge who declared herself to be no expert having never tried cloudy lemon cider before, found the taste of the two products to be very similar but accepted they are different. 

S 10(2) TMA

While the judge found the overall appearance of the Taurus Lemon Cider can (as the Aldi sign), was similar to the Thatchers trade mark, this was only to a low degree. There was no real evidence of actual confusion of a direct or indirect nature, despite very high volumes of sales of both products. 

Although the Thatchers trade mark was found to have gained some enhanced distinctiveness through use, the principal dominant features of both marks were found to be the “THATCHERS” brand in the Thatchers trade mark and the “TAURUS” brand and bulls head device on the Aldi sign, which are dissimilar. Of those elements of the marks where there was some similarity, in relation to the colour palette the judge was satisfied that the use of the colour yellow on both cider products and lemon products was ubiquitous, and the use of lemons and lemon leaves on lemon-flavoured beverages including lemon ciders was very common.

The fact that the average consumer might look at the Aldi sign and bring to mind the Thatchers trade mark was not sufficient for a finding of confusion. The average consumer would not be confused and so the s10(2) claim was dismissed.

S10(3) TMA – Unfair advantage and/or detriment

The judge found that Thatchers had a reputation throughout the UK in relation to the Thatchers trade mark, at the relevant time. On the evidence provided by Thatchers, taken from consumer comments on social media about the Taurus Lemon Cider, for example: “not quite Thatchers Lemon but for half the price there's not much to complain about,” the judge found it was clear that for the average consumer, seeing the Aldi sign would call to mind the Thatchers trade mark. 

However, the judge decided that Thatchers' claim for unfair advantage failed because she was not satisfied that Aldi had an intention to exploit the reputation and goodwill of the Thatchers trade mark or that the use of the Aldi sign, objectively, had that effect. 

Thatchers' tarnishment case regarding the different taste of the Taurus product also failed. The judge was not convinced by Thatchers' argument that those consumers, (who were found not to be confused between the Thatchers trade mark and the Aldi sign, but who had linked the two products, and knew that they are drinking the Taurus Lemon Cider), who did not like the taste of the Taurus product would consider the Thatchers Lemon Cider sold under the Thatchers trade mark to be a less attractive proposition. 

Passing off

For the reasons given when reaching a finding of no likelihood of confusion, the judge was satisfied that there was no misrepresentation that Aldi is connected in trade with Thatchers. The claim in passing off therefore failed.

Key takeaways

This decision is largely unsurprising in that it confirms that a monopoly cannot be claimed over elements on packaging which indicate the nature of the goods contained within (in this case lemons, lemon leaves and the colour yellow for lemon-flavoured drinks). However, the dismissal of this claim in its entirety shows yet again that trade marks and rights in passing off offer little protection to brands when it comes to copycat products. Instead, where it is feasible, brands should think creatively about registering and enforcing alternative IP rights, such as copyright (as Charlotte Tilbury did) or design rights (in the case of M&S), which have proven to have greater success against copycats.

Of particular interest in this judgment is the fact that the judge accepted that the Thatchers Lemon Cider was being used by Aldi as a benchmark, not just for quality and price but also for packaging (eg the use of whole, not sliced, lemons on it). This decision therefore raises interesting questions as to where the fine line between "benchmarking" and free-riding will be drawn. Further, the judge noted that there was "relatively little in the way of documentary evidence arising from the Aldi side relating to design of the packaging,…. because the majority of the design decisions were communicated orally in accordance with Aldi's deliberately lean and efficient business model". Brands should therefore be alive to the fact that if they are hoping to rely on evidence coming to light during the disclosure phase, it may simply not exist – and that such conduct does not always result in criticism and adverse inferences being drawn.

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