Brands need to put in the “unexciting but necessary work” if they want to go after potential retailer “copycats” of their products, advises a lawyer who represented Thatchers in its case against Aldi.
The cider brand won its case against the discount retailer last week in the Court of Appeal in what many believe to be a landmark decision. The court ruled in favour of Thatchers after finding that Aldi’s Taurus Cloudy Lemon cider product, which bears striking similarities to the Thatchers product of the same name, infringed on the brand’s intellectual property.
The ruling supersedes a previous decision from the High Court in January 2024 that had found there was “no likelihood of confusion” between Thatchers and its Aldi equivalent. However, in the Court of Appeal ruling, Lord Justice Arnold, made it clear that Aldi infringed on the trademark simply by “reminding” consumers of Thatchers with its packaging (or “sign”), rather than promoting confusion between the two.
What this doesn’t do is open a door for carte blanche claims against a supermarket if they’ve created a product which you as a brand feel like is riding on your coattails.
Thomas Chartres-Moore, Stephens Scown LLP
Thomas Chartres-Moore, head of the intellectual property team at Stephens Scown LLP, the firm that represented Thatchers, says the ruling “could be a watershed moment for brands” contending with copycat products from retailers.
However, the crucial word here is “could”, as brands need to take strategic steps to protect themselves against product copycats.
“What this doesn’t do is open a door for carte blanche claims against a supermarket if they’ve created a product which you, as a brand, feel is riding on your coattails,” Chartres-Moore tells Marketing Week.
He and his team spent around five years developing a “strategic approach on brand protection” with Thatchers, meaning they were working on it long before the case went to court.
“[Thatchers] was developing loads of new products, and they had a concern that […] a retail business would come along and go, ‘that’s a good product that’s selling really well, let’s do that’,” he says.
It wasn’t that the cider company had an issue with competitors, but what it does have an issue with is copycat brands attempting to “unfairly ride on the coattails of [its] success”, he says. The challenge it presented the law firm was that it wanted to be in a position to take action against that.
Brands can’t shoot from the hip
For brands that might wish to follow in Thatchers’ footsteps and take action against a retailer stocking a copycat product, or protect themselves against that eventuality, it’s far from an overnight process.
“It’s not a reactive and retrospective piece where people can start firing from the hip,” says Chartres-Moore.
Brands wishing to protect themselves from this situation need to be proactive, and do what he terms the “unexciting, necessary protective work that gets you into a position where you can do something”.
That process of preparation might involve filing lots of trademark applications, considering design rights and registered designs, and pursue consistent and accurate record keeping.
Chartres-Moore notes that these might be things that any business would say they’re doing but that can actually be difficult to achieve. In the case of Thatchers, the successful preparation saw the legal team work extremely closely with the brand.
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The firm created a team that “lived and breathed” Thatchers’ R&D and marketing over this five year period, he says. This proactivity was a crucial element of the success of the case, and meant the lawyers were fully looped in.
As well as getting its house in order, another element that a brand may need to consider when thinking about taking action against copycats is its commercial relationships with retailers.
The practice of copycat products is most prevalent in the likes of Lidl and Aldi, the latter of which even had a “Like Brands, Only Cheaper” line in its advertising campaigns. These discount supermarkets predominantly stock their own private-label products, but they do carry some brands. The practice of copycat or duping brands isn’t reserved to just these two.
With brands reliant on relationships with retailers for physical distribution, they must consider if they want to “bite the hand that feeds [them]”, in these cases, says Chartres-Moore.
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Supermarkets and their copycat products could become a component of negotiations with them, but for any brands fearful of delisting, it could merit caution.
For copycat products and brands’ legal protection against them, Chartres-Moore doesn’t think this will be the single moment where brands are magically protected. Protecting yourself against this takes time and will not happen overnight, however, what this case tells intellectual property owners, like brands, is that provided they do take the right steps, “the law will work” for them.
Chartres-Moore thinks that a few years down the line we may well see more of these cases, provided retailers don’t look at this and decide to drop the copycat approach.
He also notes that in the Thatchers case, Aldi were required to disclose its benchmarking process, whereby it was demonstrated that its instructions to its manufacturers had been to “just make it like Thatchers”.
This kind of practice is likely to disappear, he notes, lest retailers want to “paint a massive target on [their] back”.
