Copycat central – the recent plethora of supermarket copycat cases
Following the high profile legal action begun by Marks & Spencer (M&S) against German supermarket Aldi over its Colin the Caterpillar cake, the subsequent 12 months have seen a plethora of other copycat product cases being issued at court involving both retailers (as well as a number of others).
Liability arises in copycat cases arises where consumers are likely to become confused as regards the origin of the goods concerned, or when a link is created between the copycat product and a registered trade mark in the mind of the consumer and which causes the consumer to change their economic behaviour as a consequence. Typically this change in economic behaviour arises in one of two ways: either the consumer buys a product because the link to the trade mark increases the attractiveness of a product, or conversely the link damages the trade mark’s exclusivity, leading consumers no longer to buy from the brand.
Nivea -v- Aldi
At the time that Aldi was sued by M&S in relation to the Colin the Caterpillar dispute, it was already the defendant to a claim in the High Court brought by Beiersdorf AG (Beiersdorf), the owner of the Nivea Sun brand.
Beiersdorf produces what it states is the best known UK sun care brand, Nivea Sun. Beiersdorf claims that its Nivea ranges have a specific colour scheme involving the colours dark blue, metallic blue, light blue, white and yellow. It argues that customers use these ‘colour cues’ to help find sun care products on the shelf in stores, and that “eye tracking” has proved that the block of blue and yellow packaging ‘acts as a beacon’ for the sun care section of the personal care aisles, drawing members of the public to its products.
Aldi produces its own sun care range called Lacura. It updated its packaging in March 2019.
Registered trade marks for the Nivea sun care range
Aldi sun care range
Beiersdorf alleges that the similarities in the Lacura product packaging since this update show that Aldi is trying to create a link between the two sets of products, and is thereby trying to take unfair advantage by riding on the coattails of the Nivea Sun Care trade marks without paying the monies in terms of the marketing effort expended by Beiersdorf.
Aldi has defended the claim on the basis that the common elements relied on by Beiersdorf are so generic that they apply to many examples of packaging and do not act as indications of origin. It argues that the only distinctive element of Beiersdorf’s product ranges is the word ‘Nivea’, and that the colours relied on by Beiersdorf are perceived by the consumer as being indicative of sun care products generally rather than Nivea products in particular. If there are any similarities between the packaging, it claims they arise from the commonality of non-distinctive elements, in that many examples of similar packaging can be found in other products.
This dispute is typical of a copycat product dispute, in that the features of the packaging complained do not include the brand name, but instead other aspects of the products such as the font style, colour and formatting. These elements are typically much more difficult to protect, making claims of infringement less certain.
Interestingly, in this case Beiersdorf has only advanced a claim that Aldi’s products take unfair advantage of its registered trade marks. It has not advanced a claim on the basis that there is any likelihood of confusion as regards the origin of Aldi’s products or that Aldi is passing off those products as originating from Beiersdorf. This perhaps acknowledges that customers shopping in a supermarket are aware that retailers sell their own brand of cheaper products alongside those of the brand owner and are not confused between the two.
This particular dispute does not appear (yet) to have hit the trade press. Beiersdorf has in this instance chosen not to court publicity in the way in which M&S and Aldi have done in the Colin the Caterpillar case.
M&S -v- Aldi
M&S launched a second attack on Aldi in December 2021, this time in relation to the sale by Aldi of gold flake gin liquors in clementine and blackberry flavours.
A point of difference in this case is the type of claim brought by M&S. It is the registered proprietor of UK registered designs for the visual appearance of four light up gin bottle designs, and also a graphic design.
M&S claims that the registered designs protect the appearance of the features of its gin bottle designs, including the shape and contours of the bottle and cork stopper, the integrated light feature incorporated into the base of the bottle, the gold leaf flakes, and the winter forest silhouette graphic design on the bottle.
M&S alleges that Aldi’s gold flake gin liquors constitute designs which do not produce a different overall impression to the registered designs (being the test for design right infringement).
In its defence, Aldi attacks the validity of M&S’s registered designs (arguing they are unclear or comprise of commonplace elements found in many other gin bottle designs, including the ‘snow globe’ effect). It also argues that consumers who have a particular interest in bottle designs would conclude that the Aldi designs give a different overall impression to the M&S design rights.
M&S has filed a reply to Aldi’s defence, and so the case continues. It is assumed that this second claim by M&S was intended to discourage Aldi from producing further copycat products, whereas Aldi may once again believe it will benefit from the press interest in the dispute and may believe it is on stronger ground in defending a design right (rather than a trade mark) infringement case.
M&S registered design
Bottles 1 – 4, M&S registered designs; Bottles 5 and 6, Aldi gold flake gin
Lacoste -v- M&S
At the same time as the above claim was issued by M&S against Aldi, in December 2021 Lacoste issued a claim against M&S in the High Court for trade mark infringement and passing off, arising out of M&S’s use of crocodile logos on various goods, including a bedding set, children’s tops, dungarees, leggings, shorts, swimwear and t-shirts.
The Lacoste brand was created in about 1933 by the well-known tennis player René Lacoste, who was nicknamed “The Crocodile”. As a result, in addition to the name Lacoste, logos consisting of a crocodile and the brand name ‘crocodile’ are said to be used to identify Lacoste’s goods.
Lacoste’s business includes the licensing of Lacoste clothing, eyewear, bed linen, fragrances, watches and other accessories. Lacoste owns a series of trade marks comprising of the crocodile logo registered in relation to clothing and bedlinen. It is also the owner of the UK trade mark for the word ‘CROCODILE’ in respect of clothing, footwear and headgear.
Lacoste registered trade marks
Items sold by M&S
Because of the extensive use made of the logo and CROCODILE mark, Lacoste claims it has goodwill in the same and objects to M&S’s sale of goods bearing crocodile logos and using the word ‘crocodile’.
A side-by-side comparison of the logos used by M&S with the registered trade marks show that the logos are not identical, and the question will be the extent to which in real life there is a likelihood that consumers will be confused that the M&S goods originate from Lacoste, or that a link is made by consumers between the M&S goods and the Lacoste registered trade marks which takes unfair advantage or causes detriment to the distinctive character of those marks.
M&S has recently filed a defence to the claim. We anticipate that it will have defended the claim on the basis that Lacoste cannot have a monopoly in all representations of crocodiles or over the word ‘crocodile’ when it is used to describe goods which can be accurately described as having a crocodile print.
M&S may argue that there is a low degree of visual similarity between the goods and the registered trade marks and that in the context of real life circumstances consumers will not be confused as regards the origin of its goods.
Insofar as there are a range of different crocodile logos used by M&S in this dispute, it may well be the case that some of the goods concerned are held to be infringing and some are not. Given the high profile nature of M&S’s battle with Aldi, it may be somewhat embarrassing for M&S to be found to infringe Lacoste’s trade mark rights. As such, it will be no surprise to learn that this case settles before any public trial.
William Grant & Sons Irish Brands Limited -v- Lidl
Whilst M&S and Aldi have been engaged in the above battles, in May 2021 supermarket chain Lidl was ordered to temporarily withdraw its “Hampstead” gin brand across Scotland following a claim issued by the producer of Hendrick’s (William Grant) for trade mark infringement and passing off.
Hendrick’s gin was launched in 2000. William Grant is the registered owner of a UK trade mark for the shape of the Hendrick’s gin bottle, bearing a diamond shaped label.
Aldi had sold “Hampstead” gin for 10 years but changed the packaging in 2020. William Grant argues that Aldi stocks and sells third party brands and that Aldi’s customers are aware that well-known brands can be purchased from its supermarket, often at discounted prices in comparison to other retailers (one of its major selling points). It says the Hampstead gin re-design was not accidental in terms of moving towards the get up of Hendrick’s gin and there is a likelihood of direct confusion amongst consumers.
Lidl argued that approximately 90% of the products sold by it are private label goods and it does not currently have any branded spirits listed as products nationally. Further, the average consumer shopping at Lidl will be a repeat customer who is familiar with the Lidl business model and will not be expecting to find Hendrick’s gin for sale. They will also be familiar with Lidl’s own label brands such as Hampstead. There are clear differences between the trade mark and the Hampstead Gin packaging and bottle, and the price is almost half. Examples of other products with similarities to the Hendrick’s gin packaging were produced by Lidl. Lidl argued that Hampstead gin had been sold in Lidl for more than 10 years and it has its own reputation. The differences in name between Hendrick’s and Hampstead in this case is sufficient to dispel any notion of passing off.
Taking all of the above into account, the judge concluded that there was unlikely to be a likelihood of confusion given the reduced price of the Hampstead gin, the distinguishable names and the differences in the product packaging.
However, the social media and YouTube material which had been produced to the court referencing the fact that Hampstead gin looked like a “complete rip off” of Hendrick’s gin showed that the Hampstead gin does call the registered trade mark to mind. It was therefore reasonable to infer that Lidl’s plan was to increase the attraction of its Hampstead gin to its customers without undertaking any advertising or promotion for the marketing of the product. It was therefore found that William Grant had a reasonable prospect of success at succeeding at trial in showing a change in economic behaviour by customers who buy from Lidl, and that the Hampstead Gin took unfair advantage of its trade mark. An interim injunction was accordingly awarded to William Grant meaning that Lidl has had to stop sales of its Hampstead Gin pending a full trial of the case.
The decision supports brand owners who may be able to secure relief even where customers are not confused, when a copycat product strays too far across the line in attempting to benefit from the original brand’s reputation.
Bottles 1 and 2, William Grant registered trade mark and Hendrick’s gin bottle; Bottle 3, Lidl’s Hampstead gin
To conclude
The above cases as a whole show that brand owners are becoming more willing to commit to litigation, even if this is intended to force the opponent into a settlement, publicity becoming more and more a critical influential element of any dispute. We will keep you updated as regards the outcome of these cases.
If you’d like to discuss any of these issues or have questions about the article, please contact Melanie McGuirk in the Dispute Resolution team.
Melanie McGuirk
Partner, Dispute Resolution
T: +44 (0) 161 393 9040 M: +44 (0) 7790 882567
Melanie specialises in the resolution of disputes relating to intellectual property, reputation management and trade libel. Her focus is on the enforcement and protection of intellectual property and reputations, brand strategy and management, with particular experience in the retail, fashion and manufacturing industries. She is a named leader in the field of IP in the North West by both Chambers & Partners and the Legal 500.
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