Retail copycat central – what can we learn?

Retail copycat cases

Copycat central – what can we learn from the plethora of supermarket copycat cases?

Following the high-profile legal action 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 where consumers are likely to become confused over the origin of the goods concerned, or where a link is created between the copycat product and a registered trade mark, causing 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 its attractiveness, or conversely the link damages the trade mark’s exclusivity, leading consumers to no longer buy from the brand. 

Beiersdorf AG vs Aldi

At the time that Aldi was sued by M&S, in relation to the Colin the Caterpillar dispute, it was already the defendant in a High Court claim 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. It claims that its Nivea ranges have a specific colour scheme involving the colours dark blue, metallic blue, light blue, white and yellow. The company 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. 

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 the costly marketing effort already 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 is typical of a copycat product dispute, in that the features of the packaging 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 brought about a claim based on the likelihood of confusion over 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. 

M&S vs Aldi (part two!)

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.

The retailer 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 has attacked the validity of M&S’s registered designs (arguing they are unclear or comprise commonplace elements found in many other gin bottle designs, including the ‘snow globe’ effect). It has also argued 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.

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M&S has filed a reply to Aldi’s defence, and so the case continues. It’s assumed that this second claim by M&S was intended to discourage Aldi from producing further copycat products. In fact, the opposite may happen, with Aldi once again believing it will benefit from the press interest generated by the dispute and be on stronger ground in defending a design right (rather than a trade mark) infringement case.

The cases go on

The legal team at M&S has been busy in the last 12 months, with another case involving Lacoste. The French clothing brand has accused the British retailer of trade mark infringement and passing off, arising from M&S’ use of crocodile logos on various goods. The cases go on – this time involving Aldi rival, Lidl.  The supermarket chain Lidl has been 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.

The 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, with publicity becoming more and more influential in any dispute. Regardless of the shape and size of retail business, there’s little doubt that copycat cases are on the rise and the appetite to call them out is clear for all to see.

Melanie McGuirk is a partner in the IP and Dispute Resolution team at Pannone Corporate. 

Further reading from Pannone Corporate 

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