It is not common for intellectual property claims to be decided at trial (the majority settle beforehand), but there have been recent legal cases and judgments involving Aldi which indicate that the intellectual property protections are perhaps not as robust as originally thought, particularly against companies/supermarkets with business models built around lookalikes.
We consider below, the implications of recent cases involving Aldi.
The well-publicised dispute regarding M&S’ “Colin the Caterpillar” cake, sold by M&S since 1990, arose from Aldi selling a cake similarly named “Cuthbert Caterpillar”.
M&S brought a claim for trademark infringement and post-sale passing off against Aldi in 2021.
The claim was eventually confidentially settled in November (and resulted in “Cuthbert Caterpillar” returning to Aldi shelves), but the merits are telling and still worthy of discussion.
M&S’ Claims
M&S claimed infringement of three of their UK word trade marks, being two word marks for “Colin the Caterpillar” and “Connie the Caterpillar” (forming a family of marks, being the forename beginning with “c” and the word “caterpillar” following the forename), and a figurative mark for the appearance of the “Colin” packaging.
As to post-sale passing off, which occurs when a consumer, who is not confused at the time of purchase, buys the product wanting others to believe that the product when worn/used, is associated with (or is) the original, M&S argued that there was goodwill attached to “Colin the Caterpillar” and that the misrepresentation occurred post-sale when the cake was removed from the packaging.
Aldi’s Defences
Aldi relied on the existence of other products with a two-syllable name beginning with the letter “C” commonly combined with the phrase “the Caterpillar” and argued that M&S acquiesced by not taking any steps to prevent/enforce their rights in connection with other caterpillar style cakes from other third parties.
As to post-sale passing off, Aldi’s defence was that the concept of a caterpillar cake did not derive from M&S – it previously featured in children’s cookbooks prior to “Colin the Caterpillar” being sold from 1990. It also argued that consumers would not be aware of the commercial origin of a caterpillar cake once unpackaged.
Whilst never decided in Court, the permitted return of “Cuthbert Caterpillar” for sale in Aldi stores following settlement indicates that the existence of caterpillar cake products by Aldi (and other supermarkets) will continue.
Thatchers issued legal proceedings against Aldi in respect of trademark infringement and passing off for the sale of Aldi’s “Taurus Cloudy Lemon Cider” (sold since 2022), which Thatchers claimed was similar to its “Thatchers Cloudy Lemon Cider” (sold since May 2020).
Specifically, Thatchers claimed that the success of Thatchers meant that the packaging (the registered trade mark) had a reputation (and goodwill) in the UK and that Taurus’ packaging was highly similar to Thatchers’.
Thatchers’ claim was unsuccessful. In handing down the judgment on 24 January 2024, the Court found the following:
Section 10(2)(b) Trade Marks Act 1994
Section 10(3) Trade Marks Act 1994
Passing Off
Thatchers appealed the decision and it has been scheduled in a floating window from 17/18 December 2024.
M&S’s own branded gin-based liqueur range of bottles were decorated festively and contained edible golden flakes within the bottle when shaken (similar to a snow globe). There was also an LED light at the bottom of the base. This range of M&S gin products was called the “Snow Globe” range.
The product designs were protected by M&S’ UK registered design rights.
After Aldi also began to sell gin liqueurs which contained gold flakes in a festive light up bottle, M&S launched proceedings against Aldi for breach of its registered design rights.
Against the recent trend, the High Court held that Aldi’s products were in breach of M&S’s registered design rights, highlighting the number of “notable features”, that the overall impression of the bottles was not “different” and that the similarities were “striking”, such as:
The Court of Appeal (on appeal by Aldi) upheld the decision of the High Court and did not accept any of the appeal arguments raised, including the argument that the High Court had made an error in principle by comparing the impressions of the Aldi gin bottles with the registered designs (for instance, the dark background in M&S’ design rights did not mean a dark liquid had to be included in its bottles).
There are clearly advantages in registering a collection of protected intellectual property rights for products and packaging. Enforcing registered design rights can also be more helpful as the “informed user” (being the relevant person in the test under design law) is deemed to be more observant than the average consumer (being the relevant person in the test in trade mark law).
The likelihood of long-standing brands/product owners being successful in claims against supermarket “copycats” is still low. The English courts have demonstrated a willingness to permit supermarkets such as Aldi to “benchmark” their own-brand products against long-standing brands, whilst not infringing intellectual property rights.
Whilst cases such as the Aldi v M&S “snow globe gin” case and the recent Court of Appeal decision in Lidl Great Britain Limited & Anor v Tesco Stores Limited & Anor [2024] EWCA Civ 262 may lead to more “copycat” claims being successful in the future, the law as it stands still makes it difficult for brand owners with prior rights to be confident in establishing a claim.
Brand owners must be diligent in assessing every element of IP protection available to them (such as registered trade marks, registered designs and copyright protection). They must also be thorough when applying for trade marks and design rights to ensure that these protect both the designs/logos of the products and the packaging. This is the best way for brand owners to put themselves in the optimum position to protect against “copycat” products.
How to Get in Contact
If you are interested in protecting your brand or enforcing your intellectual property rights, or wish to discuss your intellectual property needs and required tailored advice, please contact Wing Ming Choi at wingming.choi@ilaw.co.uk or on +44 (0)203 987 0222
