Thatchers Cider Company Ltd v Aldi Stores Ltd
| Jurisdiction | England & Wales |
| Judge | Melissa Clarke |
| Judgment Date | 24 January 2024 |
| Neutral Citation | [2024] EWHC 88 (IPEC) |
| Court | Intellectual Property Enterprise Court |
| Docket Number | Claim No: IP-2022-000076 |
[2024] EWHC 88 (IPEC)
HER HONOUR JUDGE Melissa Clarke
sitting as a Judge of the High Court
Claim No: IP-2022-000076
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
INTELLECTUAL PROPERTY ENTERPRISE COURT
Rolls Building
New Fetter Lane
London
Martin Howe KC and Beth Collett (instructed by Stephens Scown LLP) for the Claimant
Stephanie Wickenden and Niamh Herrett (instructed by Freeths LLP) for the Defendant
Hearing dates: 23 and 24 November 2023
INTRODUCTION
The Claimant (“ Thatchers”) is a long-established cider and alcoholic beverage producer. It is the registered proprietor of UK trade mark number 3489711, for the below device mark, registered in respect of “ Cider; Alcoholic beverages, except beer” all in class 33 (“the Trade Mark”):
Thatchers launched its canned cloudy lemon cider product in February 2020 (the “ Thatchers Product”). Since then, it pleads, the Thatchers Product has been sold under and by reference to the Trade Mark, which is applied to the outside of the cans of Thatchers Product, used in advertising and promotion of the Thatchers Product, and is applied to the cardboard containers of 4-can packs of the Thatchers Product in a form which is either effectively identical to, or in which any differences do not substantially affect the identity of, the Trade Mark.
The Defendant (“ Aldi”) is a supermarket chain which operates just under 1000 stores in the UK from which it sells, inter alia, its own brand alcoholic cider products (the “ Taurus” range) and third party branded alcoholic cider products. Aldi launched a cloudy lemon cider product (the “ Aldi Product”) within its own brand Taurus range, sold as 4-can packs, in May 2022 in the following get-up:
THE CLAIM
Thatchers claims that Aldi has infringed the Trade Mark pursuant to sections 10(2)(b) and 10(3) of the Trade Marks Act 1994 (“ TMA”) and it further claims in passing off. I note for convenience here that Thatchers does not bring a claim that the brand “TAURUS” infringes its word mark “THATCHERS”.
Mr Howe, Kings Counsel, together with his junior Ms Collett, appeared before me for Thatchers. Ms Wickenden, together with her junior Ms Herrett, appeared before me for Aldi. I am grateful to them all for their careful and comprehensive skeleton arguments, their helpful oral submissions, and for the note of evidence to assist me in closing, that Mr Howe KC generously credited to Ms Collett.
In its particulars of claim, Thatchers pleads that the overall appearance of the Aldi Product is highly similar to that of the Thatchers Product. Its case in relation to section 10(3) TMA is that the Court should infer that Aldi intentionally mimicked the appearance of the Thatchers Product in designing the appearance of the Aldi Product, and in doing so, amongst other things:
i) intentionally set out to cause a link in the minds of consumers between the two in order to encourage consumers to buy the Aldi Product; and
ii) took unfair advantage of, or caused detriment to, the distinctive character and repute of the Trade Mark, without due cause.
For its claims in infringement of the Trade Mark, it is necessary for Thatchers to identify the sign used by Aldi which is said to infringe the Trade Mark. This gives rise to a preliminary issue which I will deal with now.
What is the sign complained of?
In its particulars of claim, Thatchers defines the Aldi Product in paragraph 14 in the following terms:
“In or around June 2022, the Claimant became aware that the Defendant had started to sell a cloudy lemon cider product (“the Aldi Product”), an illustration of a 4-can pack of which appears below:
It complains in the particulars of claim about “graphics on the cans and on the 4-can cardboard pack of the Aldi Product”, the “appearance on the Aldi Product” and the “graphics on the Aldi Product”. It compares a physical appearance of a single can of the Thatchers Product (rather than the Trade Mark said to be infringed) to a single can of the Aldi Product, and complains about the similarity of both cans. What it does not do, anywhere in the particulars of claim, is identify with any particularity what is the sign used by Aldi that it complains of as infringing the Trade Mark.
In its defence, Aldi raised this point, stating that Thatchers' references to “graphics on” and “appearance of” of the Aldi Product lacked sufficient particularity. Thatchers filed a Reply stating that its case “related to the appearance of the Aldi Product as a whole, in comparison with the appearance of the Trade Mark and of the Thatchers Product as a whole”.
The matter came before His Honour Judge Hacon at a case management conference on 6 June 2023 in which both parties were represented by Counsel. The lack of definition of the sign complained of was raised by Aldi, and discussed. Aldi puts the transcript of that discussion before me. The result was the sign complained of (“ the Sign”) was defined at issue 2 of the list of issues for trial attached as Schedule 2 to the CMC Order (“ List of Issues”), as “the overall appearance of the Aldi Product, as defined in paragraph 14 of the Particulars of Claim”.
Mr Howe's attempts to explain what the Court should take as the sign complained by Thatchers take up 6 pages of the transcript of day 1. His submissions included:
i) That although the definition of Aldi Product in paragraph 14 of the particulars of claim, by which the Sign is defined in the List of Issues, is illustrated by a photograph of a 4-can pack, the Sign is defined by reference to the Aldi Product, not the photograph, so it is both the individual can and the 4-can pack of Aldi Product which are complained of;
ii) It is not right to say that the Sign is used in three dimensions, rather it is simply placed on a curved surface when it is used on the can of Aldi Product, as is the Trade Mark which is also not a three-dimensional mark;
iii) The Sign appears twice around the circumference of the can, once on the front and once on the rear, as does the Mark when placed on a can;
iv) The Sign appears once on the front of the cardboard sleeve of the 4-pack of Aldi Product, although the Claimant accepts that is similar but not identical to how it appears on the individual can of Aldi Product;
v) The Sign also appears partially on the rear of the cardboard sleeve of the 4-pack of Aldi Product, although this is to a large part obscured by statutory labelling;
vi) The Sign complained of is the overall appearance of the Aldi Product, as defined, as a whole;
vii) In answer to a question from me about whether the Aldi Product (and so the Sign complained of) is a single can of the Aldi Product, Mr Howe responded “Yes”;
viii) However, he then elaborated, “The ‘product’ is actually the liquid inside, strictly, but yes it is then provided in individual cans which are then put into four-packs”;
ix) Mr Howe then held up an individual can of Aldi Product, facing me, saying “That is what I am holding, facing my Lady is what we say the Sign is and what we have been proceeding on”.
These are contradictory submissions in which the Sign is, variously said to be: both the 4-pack and the individual can of Aldi Product as a whole; a flat sign placed on the front and rear of an individual can of Aldi Product; a flat sign put twice on the cardboard packaging of the 4-pack of Aldi Product (but different from the flat sign put on the front and rear of an individual can of Aldi Product); the overall appearance of the Aldi Product which is the individual can; and that seen on the front face of the individual can of Aldi Product.
Ms Wickenden objected to this in her opening, saying “They have only ever said that they rely on the whole product, which caused us some confusion as the whole product is not usually considered a sign. They have had multiple opportunities to move away from that or clarify it, but they have always repeated that what they mean is the entirety of the [Aldi] Product is the Sign… that is what their pleaded case is. The pleaded case is the whole four-pack. If they want to say it is the whole can, then I am not going to take the point so strongly on that. But what my learned friend cannot do, and what he has just done, is stand up and say, “We complain of the sign as depicted on the front of this can and again on the back of the can and on the side of the packaging” when their pleaded case has always been that whole product is the Sign”.
Ms Collett for Thatchers addressed me further on this point in closing, taking me to the draft list of issues which was before HHJ Hacon at the CMC, and also to the transcript of the CMC, before submitting that the Sign is the whole appearance of a single can of Aldi Product, and that was what the parties understood to be the case at the CMC. I am grateful to her for clarifying Thatchers' position.
Nonetheless, this is unsatisfactory. As Mr Howe himself submitted during the course of his opening on this point, lists of issues at a CMC are not pleadings and are not meant to do the job of pleadings. I accept that the List of Issues is intended to record what Thatchers said at the CMC it meant by its pleadings, and it is, in my judgment, only fair to hold it to that as that is the basis on which Aldi has prepared for this trial. The alternative is to find that if Thatchers has not identified in its pleaded case – and at trial — what is the sign complained of with sufficient particularity, it cannot succeed on trade mark infringement. Aldi has not sought to make that argument.
In my judgment that which is identified as the Aldi Product in paragraph 14 of the particulars of claim is a single can, not the 4-pack, and this can be discerned by...
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