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When is close too close: the latest guidance from the intellectual property courts
Assessing the merits of claims for intellectual property infringement can be a nuanced exercise. Getting it wrong can result in costly and lengthy legal battles and an unwanted distraction for businesses.
This update considers the line between lawful inspiration and infringement in key judgments handed down over the past 12 months, particularly examining Thatchers v Aldi, TVIS v Howserv, and Iconix v Dream Pairs.
Thatchers v Aldi
Thatchers brought proceedings in the specialist Intellectual Property Enterprise Court (the IPEC) alleging that the design applied to Aldi’s Taurus Cloudy Cider Lemon infringed Thatchers’ trade mark and amounted to an unlawful act of passing off.
Thatchers’ Cloudy Lemon Cider
Aldi’s Taurus Cloudy Cider Lemon
The IPEC dismissed Thatchers’ claim. Contrasting the THATCHERS mark with the TAURUS sign it signalled that consumers are likely to perceive a brand name as the overriding cue for designating trade origin over more decorative elements of a product’s packaging.
Thatchers appealed the decision and, earlier this year, the Court of Appeal overturned the IPEC’s judgment finding in favour of Thatchers and determining that the packaging for Aldi’s cider had infringed section 10 (3) of the Trade Marks Act 1994 (the TMA).
The Court of Appeal held that Aldi intended its packaging to create a link with Thatchers’ product to convey the message that Aldi’s product was like Thatchers, but cheaper. Aldi had achieved substantial sales in a short period of time without spending a penny on promotion. The Court of Appeal determined that a legitimate inference was that Aldi had obtained an unfair advantage from the link it had created with Thatchers’ product. The case has attracted significant commentary with images of Aldi’s and Thatchers’ products being compared and sparking debate in the press and legal spheres. Unfortunately for Aldi it seems that the case has now reached the end of the road after its application for permission to appeal to the Supreme Court was dismissed on 4 June 2025.
The fact that Thatchers had registered the design for its packaging as a UK trade mark was key to its success. It allowed Thatchers to bring a claim for infringement under section 10 (3) of the TMA, which did not require Thatchers to establish any likelihood of confusion with Aldi. The requirement to show a likelihood of confusion, which arises in claims for trade mark infringement under section 10 (2) of the TMA and in claims for passing off, is a difficult hurdle to overcome against entities such as Aldi who have educated the market that they deal in lookalikes.
Brand owners should therefore consider whether key packaging designs may be registrable as a trade mark to benefit from the Thatchers precedent.
TVIS v Howserv
TVIS is the owner of the PETSURE trade mark for pet insurance. When Howserv launched pet insurance services under the sign VETSURE, TVIS commenced proceedings for trade mark infringement.
TVIS lost its claims at first instance. The High Court determined that the PETSURE mark was descriptive of the services which TVIS was offering, and that the evidence which was relied upon did not support any likelihood of confusion but instead amounted to customers making administrative errors.
TVIS appealed and in a decision handed down on 2 October 2024, the Court of Appeal overturned the lower court’s judgment finding that the sign VETSURE infringed the PETSURE trade mark pursuant to section 10 (2) of the TMA.
The Court of Appeal found that it was wrong to say that PETSURE was entirely descriptive. It was not immediately obvious that the SURE element of the mark was wholly descriptive of the insurance services offered; and even if it was, it does not necessarily follow that the combination of two descriptive marks renders a trade mark entirely descriptive. VETSURE was found to be an invented portmanteau word which is not found in the dictionary and whilst it alludes to pet insurance, it does not describe it.
The evidence relied upon included transcripts of customers being uncertain whether VETSURE and PETSURE are different companies and seeking clarification of that. The Court of Appeal found that this showed that consumers regarded VETSURE as a brand name, rather than a descriptive term, and that there was a likelihood of confusion.
Trade marks which are purely descriptive may be vulnerable to invalidity actions, and those which are at the more descriptive end of the scale may attract a narrower scope of protection.
The Court of Appeal’s judgment is helpful guidance that trade marks which incorporate descriptive elements cannot automatically be treated as purely descriptive. The decision also provides a useful reminder that businesses involved in pursuing or defending allegations of trade mark infringement or passing off should consider what evidence may be available from internal customer service and sales teams and whether that supports a likelihood of confusion.
Interestingly, as with Aldi in the above example, TVIS also applied for permission to appeal to the Supreme Court, but its application was refused. TVIS will therefore have to accept the consequences of the Court of Appeal’s judgment.
Iconix v Dream Pairs
One party which was granted permission to appeal to the Supreme Court was the defendant in this battle of the logos. In March this year, the Supreme Court heard Dream Pairs’ appeal against the Court of Appeal’s finding that there was a likelihood of confusion between its logo and that of Iconix. The Supreme Court’s decision was handed down on 24 June 2025 and provides important clarity as to the correct approach when considering similarity in trade mark infringement claims and the point in time at which customer confusion should be assessed but given the importance of the case, it is worth providing a reminder of the background and issues involved.
Iconix’s Umbro mark
Dream Pairs logo
Dream Pairs’ logo on product
Iconix owns the Umbro sportswear brand and issued proceedings for trade mark infringement alleging that the Dream Pairs’ logo was confusingly similar.
At first instance, the High Court determined that there was no likelihood of confusion. This was primarily because the Court considered that there was only a low degree of similarity between the parties’ logos, in particular holding that the Umbro mark was an elongated double diamond and that the Dream Pairs’ logo was a tilted, broken, rounded off square with a P in the middle. The High Court further held that Dream Pairs’ advertisement of its shoes under the DREAM PAIRS word mark reduced the prospect of a likelihood of confusion.
The Court of Appeal overturned this decision, placing a greater emphasis on the likelihood of post-sale confusion. In that context, the respective logos were not being considered straight on, as they would in advertising, but people may be looking from height to the ground at someone wearing the shoes. The Court of Appeal considered that from that perspective the logos looked more similar, and the consumer did not have the benefit of the DREAM PAIRS word mark to dispel the likelihood of confusion.
On Tuesday, the Supreme Court confirmed that it is possible for use of a logo to give rise to a likelihood of post-sale confusion even if there is no likelihood of confusion at the point of sale. It also found that realistic and representative post-sale circumstances can be taken into account for the purpose of establishing whether logos are similar and if so the degree of similarity. But the judgment overturned the Court of Appeal’s decision as it found this was not a case which involved irrationality, error of principle or of law which justified the Court of Appeal in substituting their own different view to the decision the judge at first instance had reached.
We will release a more detailed summary of the Supreme Court’s decision with further details as to the clarity for trade mark owners this decision brings. In particular, regarding the role in which this post-sale assessment plays out including the relevant angles, perspectives and contexts through which a likelihood of confusion must be determined.
Please get in touch if you have any questions about this article that relate to IP in your business or if you are being challenged over your use of IP. As the sole firm currently listed in Tier 1 of the Legal 500 rankings for Intellectual Property in Manchester, we are well equipped to support you in this area.
For more information about the new preventative duty, and for details of our preventative toolkit, please contact:
Sarah Bazaraa
Partner – Dispute Resolution
T: +44 (0) 161 393 9029 M: +44 (0) 7920 237599
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