A decision of the UK Court of Appeal provides a roadmap for an approach to attack “lookalike” packaging.
Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5
The Facts
Thatchers Cider Company Limited (Thatchers) is the largest family-run independent cider producer in the United Kingdom. In February 2020 Thatchers launched Thatchers Cloudy Lemon Cider ("the Thatchers Product"). The Thatchers Product is sold in individual 440 ml cans and in four-can packs in cardboard packaging. It has been extensively promoted by Thatchers and has sold well.
Thatchers owns a UK registered trademark for the design set out below in association with cider:
(the “Trademark”).
At the material times the Trademark was reproduced on the front and rear of each can of the Thatchers Product as well as the front, rear and top of the cardboard packaging of the four can packs.
Aldi Stores Limited is known for its business model which involves an emphasis on own-brand products (private label) and a careful selection of goods, which enables it to achieve low prices.
In May 2022 Aldi launched Taurus Cloudy Lemon Cider ("the Aldi Product"). The Aldi Product is sold in four 440 ml-can packs in cardboard packaging which it presented in the same way as the Thatcher product as shown below:
(the“Sign”).
The Action
Thatchers began proceedings against Aldi for infringement of the Trademark and for passing off. The Trial Judge dismissed the claims and Thatchers appealed to the UKCourt of Appeal.
The claim considered on appeal was based on section 10(3) of the UK Trademarks which provides
A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which—
(a) is identical with or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
Social media evidence played a role in the case in two ways. First, in addition to conventional advertising, Thatchers conducted an online campaign to promote the Thatchers Product via Thatchers' social media accounts on Instagram, Facebook, X (formerly Twitter) and Linked-in, which reached 13.86 million people. Second, Thatchers at trial relied on evidence made in consumer comments on social media about the Aldi Product ('a Thatchers Lemon cider rip off', 'my kids would call this a knock off brand', 'very good Thatchers cider rip-off', 'not quite Thatchers Lemon but for half the price there's not much to complain about' and 'Not as good as thatchers but still decent'). It does not seem that the admissibility of this evidence was questioned at trial or on appeal.
Because the Trial Judge had made errors it was necessary for the Court of Appeal to re-assess Thatchers' pleaded allegation. Justice Arnold said it was plain from a comparison between the Sign and the Trademark that the former closely resembles the latter. The third-party products in the evidence showed it was possible to convey the message that a beverage is lemon-flavoured without this close resemblance, and as a result the resemblance cannot be coincidental. This was confirmed by (i) Aldi's departure from its house style for Taurus ciders, (ii) the imitation of the faint horizontal lines in the respective designs and (iii) the design process revealed by the documentary evidence presented to the Trial Judge.
The inescapable conclusion was that Aldi intended the Sign to remind consumers of the Trademark. This can only have been done to convey the message that the Aldi Product was like the Thatchers Product, only cheaper. To that extent, Aldi intended to take advantage of the reputation of the Trademark to assist it to sell the Aldi Product. That Aldi did not intend consumers to be deceived, or even confused, as to the trade origin of the Aldi Product did not detract from this.
The appeal was allowed and a finding of infringement made in substitution of the dismissal.
Comment
In Canada a similar claim is available to a trademark owner under Section 22 of the Trademarks Act. The section states that no person shall use a trademark registered by any person in a manner likely to have the effect of depreciating the value of the goodwill attaching thereto. Goodwill consists of reputation and connection built up or gained through significant expenditure of money and which is identified with the goods distributed by the owner in association with the trademark.
The value of the goodwill attaching to a registered mark may be depreciated if any of the following occur:
(a) the esteem in which the goods or services are held is reduced,
(b) direct persuasion and enticing of customers who would otherwise be expected to buy or continue to buy goods bearing the trademark,
(c) disparagement of the mark, or
(d) the dilution of the distinctiveness or unique characteristics of a mark.
If you have questions, please contact me at mckeown@gsnh.com
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.
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