From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 7 May 2014

Aldi attacked for fishy facsimile – copycat capers continue

This Kat reported last week on moves to broaden brand owners’ powers to crack down on supermarket copycat packaging, musing that trade mark and passing-off laws might already be fit for just that purpose, were brand owners willing to use them.
It turns out that brand owners are willing to flex these muscles. As reported in a number of places, including with characteristic inaccuracy over at the Mail Online, The Saucy Fish Co (owned by Icelandic Seachill), cited as one of Britain’s coolest brands, has launched trade mark infringement and passing-off proceedings against discount grocer Aldi. The whole case is best summarised by this illustration of two of The Saucy Fish Co.’s products and two of Aldi’s. No prizes for guessing what’s going on here.
Icelandic Seachill owns a Community trade mark registration for THE SAUCY FISH CO., along with, amongst others, a UK registration for a series of six marks covering colour variants of the logo below. 
I haven’t read the pleadings, but it will undoubtedly also be claiming goodwill in the packaging design – vacuum packed fish on black plastic with a sleeve showing the brand and the product’s sauce, which is precisely the type of design adopted by Aldi (might there be a design right claim of some sort?, wonders Merpel out loud, rubbing her belly after scoffing all four of the above packets). The dispute is still at an early stage, but has started with a bang. Last week The Saucy Fish Co. obtained an interim injunction from the English High Court requiring Aldi to stop selling its copycat products. The injunction was obtained by consent, but it is an injunction nonetheless, complete with a cross-undertaking in damages from The Saucy Fish Co. to Aldi in the event that the injunction is later discharged and Aldi is successful in defending the claim at trial.

I think this one might
 have just won the Internet
This case would be a lot more interesting if Aldi had resisted the injunction and the court had ordered it, but the fact that Aldi consented shows it was worried the court would be against it if it didn’t.
The trial will be interesting – but this Kat suspects Aldi may well be keen to settle the case. A decision against it would threaten the company’s entire “Like Brands – Only Cheaper” business model, demonstrated in television adverts like this one. Aldi plays a much more dangerous game than the other major supermarkets, because while they look happy to copy shamelessly with their own brands, they don’t generally stock the “real” brand alongside it. Brand owners are not therefore faced with the dilemma of whether or not to sue their own customers, often a deciding factor where other supermarkets’ lookalike products are concerned.
A little bit more here from Rollits, who are representing the saucy brand owner.


A Lee said...

the problem from the Claimant's perspective, I think, is that everyone (or certainly the people I speak to who shop at Aldi) seems to realise that it is not the brand owners goods that what Aldi do is clever but nobody everyone realises - and so the passing off claim should fail - unless the extension is to that of unfair competition or an unfair advantage type case in passing off which has already been rejected by the court in L'Oreal/Bellure case

Anonymous said...

The recent Morroccanoil decision from the IPEC puts this matter into perspective:

iPuffin said...

Well I suspect this is very different from Moroccanoil. The choice of SAUCY definitely calls to mind, and the remainder of the packaging does not help - definitely a case of "sailing close to the wind".

I think they screwed up calling it SAUCY, and we will see the matter settle on the basis of amended packaging.

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