The importance of whole packaging protection: Trade marks, lookalikes and Thatchers v Aldi

Readers may be familiar with previous copycat cases such as Colin the Caterpillar v Cuthbert and the dispute over Marks & Spencer’s light up gin bottles. The latest copycat case involves Thatchers v Aldi and cloudy lemon cider.

The Court of Appeal, reversing the High Court decision, came down on the side of brand owners. This decision, however, will only help brand owners in the battle over lookalike products if they have registered the full packaging artwork as a trade mark. Brand owners that have only registered the brand name or logo will remain susceptible to copycats. In fact, these brands may well become the focus for the copycats’ future efforts.

Imitation is the sincerest form of flattery

When Thatchers launched a cloudy lemon cider in 2020 it registered this full packaging artwork as a trade mark:

Around two years later, Aldi launched a cloudy lemon cider as a seasonal variant to its Taurus range. The packaging looked like this:

Those playing spot the difference may conclude that the packaging is strikingly similar. Yet the High Court decided that Aldi had not infringed Thatchers’ trade mark. The Court of Appeal disagreed. That judgment has been held out as a groundbreaking decision, however it’s really an application of the existing law.

Getting your brand protection strategy right

The real reason Thatchers won is because it registered all the artwork on the packaging as a trade mark. This meant Aldi’s packaging infringed because it:

• Was similar to the trade mark
• Brought the trade mark to the mind of customers
• Was deemed to take unfair advantage of the trade mark

Thatchers would not have won if they had only registered the brand name THATCHERS or the product name THATCHERS Cloudy Lemon Cider because the Aldi packaging is not similar to those marks.

If a brand owner only registers a brand name or logo as a trade mark, that mark will not protect them from competitor branding which does not include an identical or similar name, even if other aspects of the branding are virtually the same. This is the loophole for copycats. Only registering the full artwork of the packaging will close this loophole. Many copyists will have known this before the Court of Appeal decision, now they will be even more aware of it and may focus their copycat efforts on brands that only have the brand or product name registered.

Unfair advantage

Copycat cases in the food and drink sector will nearly always involve trade marks with a reputation; copycats may only deem “famous” brands worth copying and the brand being copied will have gained a reputation by appearing on supermarket shelves. In trade mark infringement cases involving marks with a reputation, the similarity between the mark and the copycat packaging must give rise to a link between the two in the mind of the average consumer. There will be an infringement if the use of the copycat packaging takes “unfair advantage” of the registered mark. 

Whether or not there was an unfair advantage was central to the Court of Appeal decision. If Thatchers hadn’t registered its full packaging artwork as a trade mark it would have had to rely on a passing off or copyright claim instead. Those claims are notoriously more difficult to win in the context of copycat products. 

In fact, Thatchers did bring a passing off claim (which failed) as well as a trade mark infringement claim. In passing off the claimant must show there’s been a misrepresentation as to trade origin. Thatchers couldn’t demonstrate to the High Court that Aldi’s use of its packaging misrepresented to consumers that Aldi’s cloudy lemon cider was either the Thatchers’ product, or that it was manufactured, licensed or approved by Thatchers. This is because consumers are savvy, they know the imitation game. 

Whether there’s a misrepresentation is a very different question to whether or not the copycat has taken unfair advantage of a trade mark with a reputation. That’s why brand protection via trade mark registration and the right scope of registration is so important. 

Aldi’s intentions

Aldi admitted using the Thatchers’ cider as a benchmark for its product and packaging design, even asking the design agency to “see a hybrid of Taurus and Thatcher’s”.  While brand owners may think this kind of evidence will be key to a successful case, the Court of Appeal confirmed that intention is only of evidential relevance. It’s not determinative of whether or not an unfair advantage has been taken of a registered trade mark. For there to be an unfair advantage required that Aldi had, in fact, derived unfair advantage from the link created in the mind of consumers between the Aldi packaging and the Thatchers mark. This all turned on the sales figures. 

Show me the money!

Sales figures showed that Aldi’s cider achieved significant sales in a short period of time without any promotion. In the absence of evidence from Aldi showing it would have achieved equivalent sales without the copycat packaging, it was a legitimate inference that Aldi had in fact obtained this advantage from use of that packaging. This, in the words of the court, was an unfair advantage because it enabled Aldi to profit from Thatchers' investment in developing and promoting their product, rather than competing purely on quality and/or price, and its own promotional efforts. 

The appeal judges’ willingness to infer that Aldi obtained an unfair advantage is, in our view, the key part of the appeal decision. It effectively transfers the burden of proof to the alleged copycat to prove that they have not obtained an advantage, rather than requiring the trade mark owner to prove that the copycat has obtained that advantage. It’s not entirely clear from the Court of Appeal judgment, but it may be that the court was only willing to infer that Aldi had obtained an advantage because it had found that Aldi had intended to do so. If so, the scope for drawing such an inference, where there is proof that the defendant subjectively intended to take advantage, will make proving that intention an important factor in future cases. 

Aldi has indicated an intention to appeal to the Supreme Court. The grounds of that proposed appeal are not yet known, but it would be a surprise if that reversal of the burden of proof was not among them. 

Key takeaways

• Brand owners who register the full packaging artwork as a trade mark will have a very good chance of deterring copycats and much better prospects of being able to force copycats to change their packaging.
• Trade mark owners who do not register the full packaging artwork for their products, and only have registrations for their brand name or logo, will be more susceptible to copycats.
• Take advice on your brand protection strategy; budgets may be limited, and you may not intend to register all your brands as trade marks. Therefore, working out the priority brands, precise scope of each registration and the return on investment from your legal spend will be key.

For support in obtaining better protection from copycats, please contact a member of our specialist team.

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