A turning point for lookalike trade mark cases?

On Monday the Court of Appeal overturned the Intellectual Property Enterprise Court’s (IPEC) decision in the Thatchers Cider v Aldi case ([2025] EWCA Civ 5 - see here).

The Court of Appeal held that Aldi were attempting to ride on the coattails of Thatchers’ cloudy lemon cider mark, by using get up on its Taurus lemon cider cans/packaging that was too similar to Thatchers’ trade mark. This is not new territory for Aldi – they have found themselves in the press on numerous occasions as a result of their branding decisions and ‘lookalike’ products (Colin the Caterpillar, light-up gin bottles and Moroccanoil to name just a few).

However, in these types of cases, it is often difficult to persuade the Courts that there is a likelihood that customers would be confused, or that there is misrepresentation (required to substantiate a claim under the law of passing off); primarily because the brand names and logos used on the products always differ from each other.

In this case, the IPEC found that there was no likelihood of confusion as the mark and the sign were only similar to a low degree and, accordingly, there was no infringement under Section 10(2). This finding was not contested by Thatchers. Nor did Thatchers appeal the finding that there was no passing off. However, the Courts reached different conclusions in respect of Section 10(3) infringement and, specifically, unfair advantage.

Aldi have indicated that they will appeal the decision and it will be interesting to see what happens next!

The Trade Mark and the Sign
This case was really only about trade dress/packaging get up; the word elements were largely irrelevant for the purposes of the appeal. Thatchers own a trade mark registration for the figurative mark shown below, which comprises the design shown on the front of their cans, and on the cardboard packaging for its four-pack, with the wording Thatchers Cloudy Lemon Cider.

The Court of Appeal’s findings

1. Thatchers’ figurative mark (above) had a reputation (this was undisputed from the IPEC decision);
2. Consumers would make a link between the two (i.e. the Aldi product would call to mind Thatchers’ trade mark) – this was evidenced by comments made by customers online about Aldi’s ‘rip off’ lemon cider;
3. The overall design of Aldi’s Taurus Cloudy Cider cans was very close to Thatchers’ mark – the name of the product was different, but the overall impression of the packaging was highly similar to Thatchers’ as a result of the colourway and the images of the lemons. The evidence showed that Aldi was aware of Thatchers Cloudy Lemon Cider and had benchmarked Thatchers when designing the look of its Taurus product;
4. Moreover, Aldi had instructed their design team to create a hybrid of the Taurus and Thatchers get-ups;
5. There were substantial sales of Aldi’s Taurus lemon cider, in a short period of time, despite no money being spent on promoting it;
6. The IPEC judge gave no reasons for rejecting Thatchers’ ‘transfer of image’ arguments, which was an error in principle. Assessing the matter afresh, Lord Justice Arnold agreed that this is a classic ‘transfer of the image of the mark’ case, as described in L’Oreal v Bellure;
7. Aldi were attempting to ride on the coattails of Thatchers’ mark, by reminding customers of Thatchers’ trade mark, thereby taking unfair advantage of Thatchers’ reputation in the mark;
8. Thatchers’ infringement claim under Section 10(3) was therefore successful.

Key Takeaways for Brand Owners

• The decision gives hope to brand owners and provides reassurance that if they have the correct trade mark protection in place, it may now be easier to prevent others from selling lookalike products. It is worth reviewing what protection is in place for the get-up of packaging, not only the brand name and any logos.
• Thatchers were only successful because they had protected the overall ‘get up’, or trade dress, used on their cans. Moreover, the packaging had become well known and they were able to prove a reputation in the mark. Provided the lookalike product is close enough to bring to mind the right holder’s own product it seems that there would be reasonable arguments that the lookalike takes advantage of that reputation. It appears that the prospects of success under Section 10(2), based on a likelihood of confusion, are lower; it will be difficult to persuade the Court that there is a likelihood that consumers will be confused when there is other, dissimilar, branding on the lookalike packaging.
• When filing applications to register trade dress or packaging get-up, there is a risk that the UKIPO will refuse the mark on the grounds that it is purely decorative and non-distinctive (there is recent case law setting out a two-part test for trade dress, and the design of packaging must depart from the norms in the particular sector to be distinctive – see Case O/626/22 here). This could apply to marks that comprise the overall design alone without any brand name or logo. As explained above, the presence of the brand name in the Trade Mark relied upon by Thatchers was not fatal to its case. Accordingly, if the plain packaging is refused, it would nonetheless be worthwhile protecting the entire get-up with the brand name and any other distinctive elements.
• In a previous case against Aldi, M&S were successful in preventing Aldi from selling their light-up snow globe gin bottles, based on registered design protection. Copyright in the design of packaging might also be useful, so it is worth thinking about all types of IP rights which might be relied on to prevent lookalikes.

If you are interested in further information or would like assistance with protecting your brand or the design of your packaging, please feel free to contact us, or one of our Trade Mark Attorneys.