Thatchers and Aldi were recently in the Court of Appeal with Thatchers attempting to reverse the decisions in which the Aldi 'cloudy cider lemon' was deemed not to infringe Thatchers’ own 'cloudy lemon cider'. See a comparison on the packaging below.

Thatchers' original claim had been based on sections 10(2)(b) (likelihood of confusion) and 10(3) (reputation) of the Trade Marks Act 1994 and also included a claim of passing off.  The appeal only challenged the decision in relation to 10(3) and questioned various related findings. 

The appeal included, but was not limited to, the following grounds of: the finding of a low degree of similarity between the Thatchers mark and the Aldi sign; the reliance on comparative sales figures between Aldi ciders; and the incorrect application of the global assessment for unfair advantage.

The finding of a low degree of similarity

Here it was argued that the Judge gave undue weight to the word elements in the assessment whereas the so called 'non-dominant' elements would have been more important when considering the link under 10(3).  The question is whether the degree of similarity is sufficient to give rise to the specified harm.  Thatchers argued that the specified harm differs and that inevitably impacts on the question of the degree of similarity.  Although it is unusual for the Court of Appeal to overturn first instance findings relating to similarity, it has recently made such a ruling in Iconix v Dream Pairs and so it may well do so again.

The reliance on comparative sales figures

It was argued that the Judge had misunderstood the evidence by comparing sales of the Aldi Product with sales from other ciders in the Taurus family.  This was criticised on the basis that the assessment failed to take into account the global assessment of unfair advantage and change in economic behaviour of consumers as a result of the use of the sign.  The test is whether the use of a similar sign has caused consumers to change their economic behaviour versus if that sign had not been used.  As a result, it seems unlikely for this comparison of Aldi products to be the correct metric. 

The assessment of unfair advantage

The assessment of unfair advantage by the Judge was also questioned on the basis that in the global assessment undertaken by the Judge there was no indication that it included within it an assessment of an inference arising from transfer of image that would lead to unfair advantage.  The lack of finding of unfair advantage at first instance was the most surprising element of the decision, particularly as unfair advantage has been found when there is no intention to benefit from the reputation and goodwill of a mark.

These grounds of appeal were criticised by Counsel for Aldi on the basis that broadly speaking they all related to findings of fact or the application of multifactor assessments.  It was argued that it is not for the Court of Appeal to interfere with such findings on the basis that the Judge did the best with the evidence presented.  It will be interesting to see if the Court of Appeal agrees.