On 12 June, the Supreme Court denied Aldi permission to appeal against a ruling that said the retailer had infringed on the trade mark of Thatchers with the release of a cloudy lemon cider that was similar to one unveiled by Thatchers two years earlier.
The Court of Appeal had sided in favour of Thatchers in January after which Aldi announced its intention to appeal the decision.
However, the Supreme Court has now refused Aldi’s request for permission to Appeal the decision.
Duncan, who is partner at Morton Fraser MacRoberts LLP and has followed the situation closely, believes that the recent Supreme Court decision represents one of the “most important brand protection decisions we’ve seen in years”.
“By drawing a line under this case, the UK Courts have confirmed something very significant: a product does not have to cause confusion to infringe a trade mark,” Duncan told Food Manufacture.
“If it’s been designed to tap into the identity, reputation or emotional pull of another trade mark, that alone can be enough to amount to infringement by taking unfair advantage.”
Duncan added that the ruling would serve as a “green light” for brand owners to launch legal action against lookalikes.
“Protecting names and logos is not enough,” he continued.
“If you want to safeguard how your brand is experienced, from colours to layout to ‘look and feel’ to pack design, then that full package needs to be formally protected too.
“Some have argued that decisions like this tip the balance too far in favour of trade mark owners. Others worry it limits consumer choice by restricting supermarket own-brands. But the reality is that this type of unfair advantage claim helps fill a gap in UK law, especially in the absence of broader unfair competition rules like those seen in many EU countries.”
With the Aldi lemon cider now withdrawn from sale, Duncan considered what the potential implications could be moving forward.
“[Aldi] may well return with revised packaging that steers clear of the imagery that triggered the infringement ruling – and that would be perfectly lawful,” he said.
“But this case makes one thing clear: deliberate imitation, even without consumer confusion, now carries real legal risk.
“Food and drink brands must remember that reputation and goodwill are not just marketing assets - there are a legally protectable part of your brand if properly registered. And the courts are increasingly prepared to defend these rights.”
