Martin Howe KC and Beth Collett appeared for the successful appellants (“Thatchers”) in their claim against Aldi for trade mark infringement under s.10(3) of the Trade Marks Act 1994. Thatchers brought a claim against Aldi’s own brand cloudy lemon cider product, which resembled the device mark Thatchers’ had registered to protect its own highly successful cloudy lemon cider product.
The Court of Appeal unanimously overturned HHJ Melissa Clarke’s finding that there was no infringement under s10(3) of the Trade Marks Act. The court agreed with Thatchers that (i) faint horizontal lines on the Aldi Product, not found on the rest of its in-house Taurus range, but which were on the Thatchers’ Product, (ii) Aldi’s departure from its house style, including by the use of whole fruit not found in the rest of its range, and (iii) the documented design process in which Aldi had only benchmarked against Thatchers and none other, led to the “inescapable conclusion that Aldi intended the Sign to remind consumers of the Trade Mark”. Arnold LJ agreed with Thatchers that it is often the reproduction of inessential details which gives away copying, and that the only reason for Aldi to have intended the Sign to remind consumers of Thatchers’ trade mark was to convey to consumers that the Aldi Product was ‘like the Thatchers’ Product, only cheaper.’
In dismissing Aldi’s appeal against the judge’s finding of a link, the Court of Appeal concluded that in the absence of any evidence of marketing by Aldi there was a “legitimate inference” that Aldi’s high sales figures for its cloudy lemon flavoured cider product showed that Aldi “obtained the advantage” from use of its infringing Sign “that it intended to obtain”.
The Court of Appeal dismissed Aldi’s defence of use in accordance with honest commercial practices, concluding that its use was in fact unfair competition.
Finally, the court rejected Aldi’s request that it depart from the CJEU’s decision in L’Oreal v Bellure on unfair advantage in trade marks cases, having agreed with Thatchers that this is a classic L’Oreal v Bellure “transfer of image” case. Arnold LJ noted the irony of Aldi’s request, suggesting that in many European jurisdictions, Thatchers would probably have had remedies under unfair competition laws.
The images below show the Trade Mark, Thatcher’s Cloudy Lemon Cider, and Aldi’s infringing product.
