Jeremy Hertzog, Partner and Chair of the Innovation Department at Mishcon de Reya, has been quoted in Solicitors Journal, World Intellectual Property Review, and Commercial Dispute Resolution Magazine regarding a recent intellectual property decision involving Aldi and Thatchers.
The case centred on Aldi's 'Taurus' cider packaging, which Thatchers claimed infringed upon its own product design. The court ruled that Aldi had sufficiently differentiated its packaging to avoid infringement.
He said: "Aldi had benchmarked its product against the Thatchers one, using it as a reference point for its packaging design. But, in the Court's eyes, it had done enough to move a 'sufficiently safe distance away' to avoid infringement. When assessing likelihood of confusion, the Court gave particular weight to what the average consumer perusing the cider shelves at Aldi would see: namely the 'shelf stand-out' of the product gave an overwhelming impression of Aldi's 'Taurus' brand. Elements such as the limited colour palette and use of whole lemons meanwhile were found to be commonplace for lemon-flavoured drinks.
"The Court's finding that Aldi had not taken unfair advantage of the goodwill and reputation in Thatchers' trade mark is particularly interesting. Here, the Court again placed emphasis on its conclusion that Aldi had endeavoured to stay on the right side of the line, i.e., it had moved a sufficiently safe distance away, and therefore it did not have an intention to exploit Thatchers' reputation and goodwill (alongside also an objective assessment).
"The case demonstrates the complexities for rights holders faced with 'lookalike' products, and the importance of taking the future prospect of lookalikes into account when designing their packaging and related IP protection strategy. Meanwhile, rights holders will also be monitoring for developments in the other case involving Aldi this week, where it is seeking to appeal a finding of registered design infringement against it in relation to Marks & Spencers' festive gin bottle designs."
Commercial Dispute Resolution
World Intellectual Property Review