Following the recent Court of Appeal decision finding in favour of Thatchers Cider that Aldi had infringed their Trade Mark, I wanted to take a wider look at some past IP disputes involving the discount retailer and the various rights which have been involved.
Tony’s Chocolonely
The dispute between Aldi and Tony’s Chocolonely was in relation to the distinctive design of Tony’s chocolate bar. This case showed again that protecting food and drink in the intellectual property sphere can take many forms, some of which I will briefly explore below.
For some context, Tony’s Chocolonely have a distinctive irregular pattern on their chocolate bar. To quote Tony’s website this is because “it doesn’t make sense for chocolate bars to be divided into equal-sized chunks when there is so much inequality in the chocolate industry”. The distinctive shape therefore serves both as an identifier for Tony’s while also helping to emphasise their social mission.
What is particularly interesting in this case is that both Aldi and Lidl launched chocolate bars with uneven chunks. This was Aldi’s Choco Changer and Lidl’s Way To Go! bars.
However, Tony have only complained about the actions of Lidl because Aldi sought approval from Tony’s to follow their lead and importantly adopted the same sourcing principles by being a member of the “Tony’s Open Chain” initiative. Lidl did not obtain Tony’s approval in this manner.
From a cursory review of the UK Register it does not appear that Tony’s have filed a registered design or registered trade mark for their chocolate bar. A registered design could have been particularly useful in this case because it covers the look of a product and protects anything which does not produce a different overall impression, which could arguably encompass the Way To Go! bar. There would also be no requirement to show that Lidl had copied their design, which would have to do if Tony’s were seeking to rely on unregistered design rights or copyright.
A UK trade mark registration for the 3D shape of the chocolate bar could potentially protect the shape of the Tony’s chocolate bar as well (providing a potential never ending monopoly). However, shape marks are difficult to get to the registration stage – a 3D shape cannot be registered as a Trade Mark if the shape (1) arises from the inherent nature of the object/goods; (2) provides a technical function; (3) adds substantial value to the product. Indeed, KitKat chocolate bars were not inherently distinctive just because it consisted of a shape that that was outside the norms of a particular sector. Further, it may be necessary to prove that the shape of the irregular chocolate bar alone informs the user that the origin is attributed to Tony’s. We note that Tony’s do own a trade mark registration for the chocolate bar design in the EU, but since the UK’s departure from the EU this does not cover the UK.
Nevertheless, even if Tony’s had registered a design or trade mark in the UK, it may well still have been the case that they would not look to actively pursue any claims before the courts. Tony’s approach to the dispute has been primarily to focus on the fact that Lidl is not a part of their Open Chain initiative and inviting them to join. That is, using the opportunity effectively for some additional marketing (reflected in the news articles covering the dispute) while highlighting their social program.
This case is therefore a good example where a registered design could be incredibly useful in protecting the product, alongside other rights, but also that even if Tony’s had such registered rights, it might not be the most effective or desired way to actually address the imitation.
This is why I find working in the food and beverages industry interesting, particularly when considering companies that have recognisable brands and images they are concerned with. While intellectual property rights are still very important to these companies, there are also other considerations that need to be made in enforcement.
Colin the Caterpillar
Take, for example, the dispute over Colin the Caterpillar between Marks & Spencer and Aldi. In this case, M&S were unhappy about Aldi’s Cuthbert the Caterpillar and did launch legal proceedings which alleged design infringement, trade mark infringement, and passing-off.
However, with this case it quickly became apparent that the media storm was overtaking the legal proceedings. There were #FreeCuthbert campaigns launched on social media and the idea of a dispute over a chocolate caterpillar cake was roundly mocked. This quickly became a case being fought in the court of public opinion, which renders verdicts much quicker than the legal system. Ultimately, this was resolved in an out-of-court settlement in which it is understood that Cuthbert would be slightly changed going forward to further differentiate it from Colin.
Again, this shows a slightly different approach in that legal proceedings were launched, but the legal proceedings ended up in effectively supplementary to the media coverage. I have no doubt that the decision to settle prior to trial was in no small part influenced by the ongoing social media mockery.
Christmas Gin Bottles
Finally, another case with an alternative approach was another dispute between M&S and Aldi over light-up Christmas gin bottles. I have previously written about this case and the interesting implications on registered design law. However, this also highlights another enforcement approach in that M&S again launched legal proceedings (for registered design infringement) but despite this occurring at around the same time as the initial Colin/Cuthbert dispute, the light-up gin bottles attracted much less media interest.
I expect the difference being that the gin bottles were relatively new and did not have the same emotional impact as an argument about an anthropomorphic caterpillar cake. This case ultimately went all the way to the Intellectual Property Enterprise Court and Aldi were found to have infringed M&S’s registered designs. This case shows the benefit of being able to run arguments against lookalikes based on design infringement and not rely solely on trade mark infringement.
Closing Thoughts
Each of these cases shows that in the world of food and drink protection, particularly when major brands are involved, there are many ways to address potential infringement to achieve the intended result and relying on registered rights is easier and more cost effective than relying on unregistered rights such as unregistered designs or passing off. Consideration therefore needs to be given as to what that intended result would be for your business and what may help you get there.
For example, if Tony’s had a registered design for the uneven chocolate bar or attempted to register a trade mark they may then have a stronger negotiating position for encouraging Lidl to sign up to their social program in exchange for a license to use the registered design or trade mark registration. Therefore, even where ultimately court enforcement is not the intention, registered rights can help to get to the end goal.
All of the above disputes focus on the looks of the products since that is ultimately what was being mimicked. As touched on above, food and drink protection can also find relevance in trade mark law for the associated branding, packaging and in some cases the actual product (save for the above exceptions listed above), and in patent law in any inventions involved in the composition of the food or drink, the manufacture thereof, or in the packaging technology.
A carefully thought-out intellectual property strategy in the food and drink area can therefore help you achieve your overall outcomes, without necessarily requiring a day in court.
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