When life gives you lemons, make cloudy lemon cider! The E&W High Court hands down judgment in Thatchers v Aldi trade mark case

In February 2020, Thatchers Cider Company (Thatchers), a well-known cider producer, launched its canned Cloudy Lemon Cider product (Thatchers’ Product) using the following mark, which was also registered as a trade mark in the United Kingdom (the Mark): 

In May 2022, Aldi, the supermarket chain which already sold a range of ciders under its brand “Taurus”, launched its own cloudy lemon cider product within this range, using the following product get-up (the Aldi Product):

Thatchers consequently brought a claim before the Court, alleging trade mark infringement (under sections 10(2) and 10(3) of the Trade Marks Act 1994 (TMA)) and passing off, including on the grounds that (summarily) Aldi had intentionally mimicked the appearance of Thatchers’ Product in designing the appearance of the Aldi Product, and in doing so:

Aldi denied infringement, and additionally sought to rely on the defence under section 11(2) TMA, namely that, to the extent there was use of the Mark, such use was descriptive of  characteristics of the goods or services offered. 

The Court held that the overall appearance of the Aldi Product was similar to the Mark, but only to a low degree, in light of its findings that the dominant elements of each sign were the central elements, namely “THATCHERS CLOUDY LEMON CIDER” for the Mark, and the bulls head device with the brand “TAURUS” for the Sign, which were aurally and conceptually dissimilar. The fact that whole lemons and green leaves were used on both products was a point of visual and conceptual similarity, but in the Court’s view had been treated quite differently on the Sign and the Mark. 

As for likelihood of confusion, the Court agreed with Thatchers’ submission that its Mark enjoyed a strong reputation and enhanced distinctiveness through use, and that enhanced distinctiveness attached to the Mark as a whole and not any individual element therein. 

Further, the Court noted that the average consumer shopping in Aldi, who is reasonably well informed and observant, would know that Aldi also sells third party brands in its stores, and would not be surprised to see something which they perceived or mistook to be Thatchers’ Product. 

Despite this, the Court found that the absence of any real evidence of direct or indirect confusion despite the very high volumes of sales of both the Aldi Product and Thatchers’ Product, was a (non-determinative) factor weighing against the likelihood of confusion, and further, that the colour palette used by both products (creamy-yellow and greens) was ubiquitous to lemon-flavoured drinks in the market, notwithstanding the fact that Aldi’s disclosure documents showed that the design contractor had been specifically instructed to add lemons so that the Aldi Product would be a “hybrid of Thatchers and Taurus“. 

Overall therefore, and given the low degree of similarity, the Court found that on a global assessment there was no real likelihood that the average consumer would be confused, and the claim under section 10(2) TMA failed. 

As for section 10(3), the Court was satisfied that Thatchers had a reputation throughout the UK during the relevant period, and that on the balance of probabilities, consumers seeing the Sign would call to mind the Mark, given evidence of numerous consumer comments online about the Aldi Product being a “rip off” or “knock off” of Thatchers’ Product, which they would not have done if they just thought they were both cloudy lemon ciders. 

The remaining question was whether there was any unfair advantage or tarnishment/detriment. 

In respect of unfair advantage, the Court noted that, following L’Oréal SA v Bellure NV (C-487/07), what it was concerned with was whether Aldi had attempted to take advantage of, or ride on the coat tails of the Mark, in order to exploit it and gain a benefit from its reputation and Thatchers’ marketing efforts which have been made by Thatchers.

The Court observed that, in this case, although Aldi’s witness admitted that Aldi had added lemons to the Sign in part because Thatchers had, he said that they had mainly done so because lemons and lemon leaves were very effective to communicate the fact to consumers that this was a lemon cider product. The Court consequently held that Aldi had endeavoured to develop a sign which was a “safe distance” from the Mark, and that the use of the Sign had the objective effect of taking advantage of the goodwill and reputation of the Mark. 

Finally, in respect of passing off, the requirements which must be met are comprised of the ‘classical trinity’ arising out of the Jif Lemon case (Reckitt & Colman Product v Borden [1990] 1 WLR 491 HL) namely goodwill or reputation; misrepresentation leading to deception or a likelihood of deception; and damage resulting from the misrepresentation.

The Court held that there was no evidence before it that any consumers believed the Aldi Product to be that of Thatchers (e.g. that it had been manufactured, or licensed, or approved by Thatchers). For the reasons given in respect of finding no likelihood of confusion, the Court was satisfied that there was no misrepresentation. 

Accordingly, the passing off claim also failed, and Thatchers’ case was dismissed accordingly.