The Appeal - Thatchers Cider Company Ltd v Aldi Stores Ltd

 

Jane Lambert

Court of Appeal (Lords Justices Arnold and Phillips and Lady Justice Falk)  Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5 (20 Jan 2025)

This was an appeal by Thatchers Cider Company Ltd. ("Thatchers") against the dismissal of its claim for trade mark infringement and passing off by Her Honour Judge Melissa Clarke in Thatchers Cider Company Ltd v Aldi Stores Ltd [2024] EWHC 88 (IPEC) (24 Jan 2024).  I discussed that case in Trade Marks and Passing off - Thatchers Cider Company Ltd v Aldi Stores Ltd on 24 Jan 2024.  The appeal was heard by Lord Justice Arnold, Lord Justice Phillips and Lady Justice Falk on 17 and 18 Dec 2024. Videos of the argument are available on YouTube (17 Dec 2024 10:30 - 13:00, 14:00 - 16:15) (18 Dec 2024  10:30 - 13:00 and 14:00 - 16:15).  Judgment was handed down on 20 Jan 2025.  Lord Justice Arnold delivered the lead judgment with which Lord Justice Phillips and Lady Justice Falk agreed.  By para [153] of his judgment in Thatchers Cider Company Ltd v Aldi Stores Ltd [2025] EWCA Civ 5 (20 Jan 2025) he allowed Thatchers's appeal against the judge's dismissal of its claim under s.10 (3) of the Trade Marks Act 1994 and substituted a finding that Aldi Stores Ltd ("Aldi") had infringed UK Registered Trade Mark No. 3489711 ("the trade mark") pursuant to that provision.

The Trade Mark

Thatchers registered the following sign for cider and alcoholic beverages, except beer. in class 33 as a trade mark with effect from 14 May 2020:

Whenever I refer to "the trade mark" or quote a passage from Lord Justice Arnold's judgment that mentions "the Trade Mark" I mean this mark.

The Alleged Infringement

In May 2022 Aldi launched its own cloudy lemon cider in the following packaging:

The Action

On 22 Sept 2022 Thatchers issued proceedings against Aldi for trade mark infringement under s.10 (2) and (3) of the Trade Marks Act 1994 and for d passing off in the Intellectual Property Enterprise Court.  After a trial that took place between  23 and 24 Nov 2023, Judge Melissa Clarke dismissed the claim on 12 Feb 2024.

The Appeal

According to Lord Justice Arnold, Thatchers appealed against the dismissal of its claim under s.10 (3) on no less than 10 grounds though some of those grounds overlapped.  Thatchers did not challenge the dismissal of its claim under s.10 (2) or of its claim for passing off.  Aldi served a respondent's notice seeking to uphold Judge Melissa Clarke's judgment on 5 additional or alternative grounds.   Lord Justice Arnold did not list the grounds of appeal or of the respondent's notice in numerical order although he mentioned the number of each of those grounds in his judgment/

The Sign

Lord Justice Arnold said in para [74] of his judgment that the first step in any trade mark infringement dispute is to identify the sign being used by the defendant which is to be compared with the claimant's trade mark.  Judge Melissa Clarke considered that the Particulars of Claim did not clearly identify the sign complained of and she found Thatchers's submissions on this topic contradictory and confusing. She concluded that, on the proper interpretation of the Particulars of Claim, "the Sign is the overall appearance of a single can of the Aldi Product, and not merely one face of it". She did not form her own view on the question.  

Thatchers contended that the judge fell into error in two respects. First, by treating both repeats of the design on the can as forming part of a single sign and excluding the repetition of the design on the front of the cardboard packaging. Secondly, by wrongly treating the sign as a 3-dimensional product.

His lordship agreed with Thatchers.   In his view, it was clear from the pleading that the sign comprised "the graphics on the cans and on the cardboard 4-can pack" of the product and not the product itself. Moreover, it was also tolerably clear that this meant the design that was printed on the front and rear of each can and on the front of the cardboard packaging. Essentially the same design was printed both on the cylindrical surface of the can and on the flat surface of the cardboard packaging. Even if that were not clear from the pleading, Lord Justice Arnold would have reached that conclusion as a matter of assessment.

Whenever I refer to "the sign" or quote a passage from the judgment that refers to "the Sign" in this article I am referring to "the graphics on the cans and on the cardboard 4-can pack".

Assessment of Similarity Between Sign and Mark

The trial judge had assessed the degree of similarity between the sign and mark as low.  Thatchers challenged Her Honour's assessment while Aldi supported it on the ground that she should have taken into account the differences between the text in the information panels on the cans but had failed to do so.

Lord Justice Arnold dealt with Aldi's point peremptorily.   The judge could not have taken account of the text because it never formed part of the sign as identified above.

Thatchers argued that the judge had been wrong to hold that "a point of difference" between the trade mark and the sign was that the trade mark was 2-dimensional whereas the sign was 3-dimensional. His lordship agreed. In his view, the error stemmed partly from the judge's error as to what constitutes the sign. In addition, the judge had been incorrect to disregard the way in which Thatchers used the trade mark, namely printed on the front and rear of the cylindrical surface of cans of its product as well as on the front, rear and top of the cardboard packaging.

Secondly, Thatchers argued that the judge had been wrong simply to import a finding of similarity which she initially made for the purposes of considering infringement under s.10 (2) into her assessment of the s.10 (3) case.  Thatchers submitted that the purpose of the assessment was different. In the context of s.10 (2), the question was whether the similarity between the sign and the trade mark, in combination with the identity or similarity of the goods or services and other relevant factors, was such as to give rise to a likelihood of confusion. In the context of s.10 (3), the question is whether the similarity between the sign and the trade mark, in combination with other relevant factors, was such as to give rise to a link and one of the three specified types of injury. 

Aldi accepted that the purpose of the assessment of similarity was different, but argued that this did not alter the assessment itself.  Lord Justice Arnold agreed that it was necessary to keep in mind the differences between an assessment of similarity for the purposes of s.10 (2) and an assessment of similarity for the purposes of s.10 (3).  However, he noted that tribunals often take a short cut and he had done so himself on occasions.  There was nothing wrong in taking such a shortcut provided that the tribunal took care not to allow its analysis of the other requirements for infringement under s.19 (3) to be conditioned by factors that are only relevant to the likelihood of confusion.

The upshot was that the trial judge erred for the first reason given by Thatchers.  It followed that she should have assessed the similarity as somewhat higher than she did.

Aldi's Intention

Thatchers pleaded in para 18 of its particulars of claim that, in adopting the sign:

"the Defendant intentionally set out to create a link in the minds of consumers between the Aldi Product and ... the Trade Mark in order to encourage consumers to buy the Aldi Product and thereby benefit from that link".

It added at 20 (c):

"The Defendant by its use of the graphics on the Aldi Product seeks to ride the coattails of the substantial reputation of the Trade Mark in order to benefit from its power of attraction, fame and/or prestige, and to exploit the marketing effort expended by the Claimant to create and maintain the images [sic] of that mark."

Judge Melissa Clarke rejected Thatchers's contention.   In her view Aldi's evidence that its product should be clearly understood as a "TAURUS" branded cider was supported by extensive use of the "TAURUS" brand, the bull's head device and the swoosh on the front and back of the sign,  It was also supported by the low degree of similarity of the sign to the trade mark. On balance, she was satisfied that Aldi did not develop its product intending to take advantage of the goodwill and reputation in the trade mark.

Thatchers criticized Her Honour's reasoning as follows in para [89]:

"First, she confused an intention to take advantage of the reputation of the trade mark, which is relevant to section 10 (3), with an intention to deceive, which is relevant to section 10 (2). Secondly, she made what Thatchers contends is a rationally insupportable finding that Aldi had not significantly departed from its house style for Taurus ciders. Thirdly, she wrongly discounted the faint horizontal lines present in both the Trade Mark and the Sign."

On the first point, Thatchers submitted that the judge fell into error by muddling up, or at least failing clearly to distinguish between, an intention to deceive and an intention to take advantage of the reputation of the trade mark. Lord Justice Arnold agreed. Aldi's evidence that its intention was that its product should be clearly understood as a Taurus-branded cider would have been highly relevant to an allegation of intent to deceive, but much less relevant to the allegation of an intention to take advantage of the reputation of the trade mark. 

His lordship accepted Thatchers's submission that the trial judge had obviously been wrong to find that Aldi had not significantly departed from its house style for Taurus ciders. There was a manifest departure from the house style in three significant respects. First, the house style features the word TAURUS printed in white on a black background, whereas the packaging has TAURUS (and CLOUDY LEMON) printed in black on a pale yellow background. Secondly, the house style did not include any images of fruit, whereas the sign included prominent images of lemons (and also leaves). Thirdly, the combined effect of the pale yellow background and the presence of the lemons made the "swooshes" less prominent. These points held good even for the comparison with Taurus Cherry, which was introduced after the lemon cider product.

Lord Justice Arnold agreed that the judge had been right to discount the faint horizontal lines when considering the likelihood of confusion but she was wrong to do so when assessing Aldi's intention.  His lordship observed that it is often the reproduction of inessential details which gives away copying. While this was not a copyright or design case, there was no other explanation for the close imitation of details of the trade mark.

Having rejected the trial judge's findings the Court of Appeal had to reassess Thatchers's pleaded allegation.   Lord Justice Arnold said at para [99]:

"In my judgment it is plain from a comparison between the Sign and the Trade Mark that the former closely resembles the latter. The third-party products illustrated in paragraphs 13 and 18 above demonstrate that it is entirely possible to convey the message that a beverage is lemon-flavoured without such a close resemblance, and therefore the resemblance cannot be coincidental. This is confirmed by (i) Aldi's departure from its house style for Taurus ciders, (ii) the imitation of the faint horizontal lines and (iii) the design process revealed by the documentary evidence referred to in paragraph 21 above. The inescapable conclusion is that Aldi intended the Sign to remind consumers of the Trade Mark. This can only have been in order to convey the message that the Aldi Product was like the Thatchers Product, only cheaper. To that extent, Aldi intended to take advantage of the reputation of the Trade Mark in order to assist it to sell the Aldi Product."

Aldi's Sales Figures

Judge Melissa Clarke concluded at para [134] of her judgment that Thatchers's contention that Aldi had taken unfair advantage of the trade mark failed.  One of the reasons why she arrived at that conclusion is that Thatchers failed to persuade her that the sales figures for Aldi's lemon cider product were disproportionate to its sales of other fruit ciders. Thatchers argued that she had been wrong to find that the sales achieved by Aldi for its lemon cider products were not disproportionate to those of other ciders in the Taurus range.  It made several criticisms of her analysis which Lord Justice Arnold summarized at para [103] of his judgment.  His lordship saw force in those criticisms particularly the last one.  He added at [104]:

"The sales data available are limited, however and make it difficult to draw meaningful comparisons. All one can say with confidence is that the Aldi Product achieved significant sales in a short period of time without any promotion, and appears to have sold better than the nearest comparator in the Taurus range, namely Taurus Cherry."

Thatchers tried to argue that sales of Aldi's other Taurus ciders had been achieved not on their own merits but by their strong resemblance to Stronbow's.  

Taurus Original Cider	Strongbow Original Cider
Taurus Fruit Cider	Strongbow Dark Fruits Cider
Taurus Pear Cider	Strongbow Cloudy Apple Cider
Taurus Rosé Cider	Strongbow Rosé Cider

That issue had not been investigated at trial and Lord Justice Arnold did not think that it was either possible or necessary to decide it on appeal.  It was sufficient to conclude that Aldi's product had achieved significant sales over a short period of time without any promotion. Aldi had not attempted to prove that it would have made the same volume of sales without use of the sign, but rather with a design that was consistent with the Taurus house style. 

Unfair Advantage

Thatchers' s first ground of appeal was that Judge Melissa Clarke had been wrong to reject its case that Aldi's use of the sign had taken unfair advantage of the reputation of the trade mark. Its main criticism was that she had failed to address Thatchers' pleaded case that Aldi's use of the sign had resulted in a transfer of image of the kind described by the CJEU in paras [41] and [49] of its judgment in Case C-487/07 L'Oréal SA and others v Bellure NV and others  [2010] RPC 1, [2009] EUECJ C-487/07, [2010] Bus LR 303, [2009] ECR I-5185, [2009] ETMR 55, [2009] EUECJ C-487/7. Lord Justice Arnold discussed those paragraphs in paras [45] and [46] of his judgment:

"[45] The Court defined "unfair advantage" at [41] as follows:

'As regards the concept of 'taking unfair advantage of the distinctive character or the repute of the trade mark', also referred to as 'parasitism' or 'free-riding', that concept relates not to the detriment caused to the mark but to the advantage taken by the third party as a result of the use of the identical or similar sign. It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the characteristics which it projects to the goods identified by the identical or similar sign, there is clear exploitation on the coat-tails of the mark with a reputation.'

[46] The Court of Justice explained the correct approach to determining whether unfair advantage has been taken of the distinctive character or repute of the trade mark as follows:

'[44]. In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and degree of proximity of the goods or services concerned. As regards the strength of the reputation and the degree of distinctive character of the mark, the Court has already held that, the stronger that mark's distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to that effect, Intel Corporation, paragraphs 67 to 69).
[45] In addition, it must be stated that any such global assessment may also take into account, where necessary, the fact that there is a likelihood of dilution or tarnishment of the mark.
...
[48] In the general assessment which the referring court will have to undertake in order to determine whether, in [the] circumstances [of the instant case], it can be held that unfair advantage is being taken of the distinctive character or the repute of the mark, that court will, in particular, have to take account of the fact that the use of packaging and bottles similar to those of the fragrances that are being imitated is intended to take advantage, for promotional purposes, of the distinctive character and the repute of the marks under which those fragrances are marketed.
[49] In that regard, where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark.'"

Although Thatchers had pleaded that Aldi's use of the graphics on its packaging would cause a transfer of image from the mark and product and its appearance in the mind of consumers and had mentioned it in its skeleton argument and opening submissions there was no discussion of the point in Judge Melissa Clarke's judgment.  She rejected Thatchers's case but gave no reasons for doing so.   In Lord Justice Arnold's view, that was a clear error of principle.  The Court of Appeal had to consider the matter anew correcting the judge's other errors, and in particular those concerning the similarity of the sign and the trade mark and Aldi's intention.  His lordship noted that there had been no challenge by Aldi to Her Honour's finding that the mark had a reputation.  Lord Justice Arnold concluded at [114]:

"In my judgment Thatchers is correct that the present case is squarely within the Court of Justice's description in L'Oréal v Bellure at [41] and [49] of 'a transfer of the image of the mark' and 'riding on the coat-tails of that mark'. For the reasons given in paragraph 99 above, it is clear that Aldi intended the Sign to remind consumers of the Trade Mark in order to convey the message that the Aldi Product was like the Thatchers Product, only cheaper. To that extent Aldi intended to take advantage of the reputation of the Trade Mark in order to assist it to sell the Aldi Product."

He continued at [117]:

"According to the Court of Justice in L'Oréal v Bellure, this is precisely the kind of conduct that the law is designed to protect the proprietor of a registered trade mark with a reputation against."

Subject to Aldi's contention that the Court of Appeal should depart from L'Oréal v Bellure, he said that he would allow Thatchers' appeal against the judge's conclusion that Aldi's use of the sign did not take unfair advantage of the reputation of the trade mark.

Damage to the Repute of the Trade Mark

Having decided the unfair advantage point in favour of Thatchers it was not unnecessary for the Court of Appeal to consider whether Aldi's use of its sign was detrimental to the repute of the mark but Lord Justice Arnold discussed it as the point had been argued. He rejected Thatchers's first argument that the products were so different that the taste of Aldi's product was likely to cast Thatchers's product in a negative light describing the judge's finding to the contrary as "unassailable."   As for Aldi's use of lemon flavouring rather than lemon juice, there was no evidence that anyone had complained of such use, still less that any consumer had thought that Thatchers had used any of those ingredients.  A consumer who checked the labelling would conclude that the use of cheaper ingredients might be one of the reasons for the lower price of Aldi's cider.  Accordingly, his lordship dismissed the appeal against the judge's finding that Thatchers had not established that the use of the sign was detrimental to the repute of the trade mark.   

Whether Aldi had a Defence under s.11 (2) (b)

S.11 (2) (b) of the Trade Marks Act 1994 provides:

"A registered trade mark is not infringed by—

.....................................
(b)    the use of signs or indications which are not distinctive or which concern] the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.

........................

provided the use is in accordance with honest practices in industrial or commercial matters."

Aldi argued that if it was liable to Thatchers under s.10 (3) of the Act it had a defence under s.11 (2) (b). The trial judge had not addressed that point because she did not have to do so and the issue was argued only briefly on appeal.

Lord Justice Arnold found some guidance in Lady Wolffe's judgment in Tomatin Distillery Co Ltd v Tomatin Trading Co  [2021] ScotCS CSOH_100, 2021 SLT 1327, [2021] CSOH 100, 2021 GWD 33-438 (6 Oct 2021 where the Scottish intellectual property judge found that the defender's sign did not infringe the pursuer's trade mark but if it did the defender had a defence under s.11 (2) (b),  Lord Justice Arnold had no difficulty with Lady Wolffe's decision and noted that her reasoning consisted of two steps.  The first was to treat the sign as consisting essentially of the words TOMATIN TRADING COMPANY which seemed perfectly reasonable to his lordship given that the symbol was of very little distinctiveness and would not feature in oral use anyway. The second step was to find that TOMATIN TRADING COMPANY is an apt description of a trading company based in Tomatin. 

It does not appear that either party mentioned to the Court of Appeal that her ladyship's judgment had been appealed.  In The Tomatin Distillery Co. Ltd. v The Tomatin Trading Co. Ltd. [2022] CSIH 28, 2022 GWD 20-286, [2022] ECC 24, 2022 SCLR 316, 2022 SLT 745, [2022] ScotCS CSIH_28 the Inner House dismissed the appeal but varied Lady Wolffe's finding of bad faith.  Their lordships also confirmed that the defender would have had a defence under s.11 (2) (b)  had he needed one.  I discussed the appeal in Trade Marks: The Tomatin Distillery Co. Ltd. v The Tomatin Trading Co. Ltd on 16 June 2022.

Lord Justice Arnold distinguished the case before him from Tomatin,   The sign was on the cans and packaging.  Judge Melissa Clarke had held that it was distinctive of Aldi and her finding had not been challenged. It would have been illegitimate to dissect the sign into its constituent elements for the purposes of applying s.11(2) (b) and to argue that, because some of those elements were descriptive, the sign as a whole fell within the section.  He would dismiss Aldi's argument on that point alone, 

In case he was wrong on the first point, his lordship next considered whether Aldi's use of its sign had been in accordance with honest practices in industrial or commercial matters.  He noted that the CJEU had laid down the following principles which it had summarized between [135] and [138]:

"[135] First, the requirement to act in accordance with honest practices in industrial or commercial matters 'constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark proprietor': see Case C-63/97 Bayerische Motorenwerke AG v Deenik [1999] ECR I-905 at [61], Case C-100/02 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH [2004] ECR I-691 at [24], Case C-245/02 Anheuser-Busch Inc v Budĕjovický Budvar np [2004] ECR I-10989 at [82], Case 228/03 Gillette Co v LA-Laboratories Ltd Oy [2005] ECR I-2337 at [41] and Case C-17/06 Céline SARL v Céline SA [2007] ECR I-7041 at [33].
[136] Secondly, the court should 'carry out an overall assessment of all the relevant circumstances', and in particular should assess whether the defendant 'can be regarded as unfairly competing with the proprietor of the trade mark' see Gerolsteiner at [26], Anheuser-Busch at [84] and Céline at [35].
[137] Thirdly, an important factor is whether the use of the sign complained of either gives rise to consumer deception or takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark. If it does, it is unlikely to qualify as being in accordance with honest practices: see Gillette at [49], Anheuser-Busch at [83] and Céline at [34].
[138] Fourthly, a mere likelihood of confusion will not disqualify the use from being in accordance with honest practices if there is a good reason why such a likelihood of confusion should be tolerated: Gerolsteiner at [25],"

In the absence of any argument on these points, Lord Justice Arnold concluded at para [141] that Aldi's use of the sign was not in accordance with honest industrial and commercial practices because it was unfair competition.

Whether to depart from  L'Oréal v Bellure

S. 6 (5A) of the European Union (Withdrawal) Act 2018 provides:

"A Minister of the Crown may by regulations provide for—
(a)    a court or tribunal to be a relevant court or (as the case may be) a relevant tribunal for the purposes of this section,
(b)    the extent to which, or circumstances in which, a relevant court or relevant tribunal is not to be bound by retained EU case law,
(c)    the test which a relevant court or relevant tribunal must apply in deciding whether to depart from any retained EU case law, or
(d)    considerations which are to be relevant to—
(i)    the Supreme Court or the High Court of Justiciary in applying the test mentioned in subsection (5), or
(ii)    a relevant court or relevant tribunal in applying any test provided for by virtue of paragraph (c) above."

The European Union (Withdrawal) Act 2018 (Relevant Court) (Retained EU Case Law) Regulations 2020 (SI  2020 No 1525) were made in accordance with that provision.   S.6 (4) (ba) of the Act provides that a relevant court or relevant tribunal is not bound by any assimilated EU case law so far as is provided for by regulations under subsection (5A).  Reg 3 (b) of the Regulations designates the Court of Appeal as a "relevant court" for the purposes of s.6 of the 2018 Act.  Reg 5 provides:

"In deciding whether to depart from any retained EU case law by virtue of section 6(4)(ba) of the 2018 Act and these Regulations, a relevant court must apply the same test as the Supreme Court would apply in deciding whether to depart from the case law of the Supreme Court."

That test is set out in the Practice Statement (Judicial Precedent) [1966] 1 WLR 1234.  

As Lord Justice Arnold had said that the case before him fell squarely within the CJEU's description in L'Oréal v Bellure at [41] and [49], Aldi invited the Court of Appeal to depart from that Court's decision.  His lordship said that he had considered the exercise of that power between paras at [73]-[89] of his judgment in Warner Music UK Ltd v TuneIn Inc [2021] EWCA Civ 441, [2021] Bus LR 1119 where he did not use it and between paras [80] and [89] of his judgment in Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd [2023] EWCA Civ 1451, [2024] FSR 3 where he did.  The part of judgment from which Aldi invited the Court of Appeal to depart was para 50:

"Article 5 (2) of Directive 89/104 must be interpreted as meaning that the taking of unfair advantage of the distinctive character or the repute of a mark, within the meaning of that provision, does not require that there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image."

In his lordship's judgment, it would be inappropriate to depart from the CJEU's judgment for the following reasons which he listed between paras [145] and [151] of his own:

1. Parliament has not repealed or amended s.10 (3) or s.5 (3) since the UK's departure from the EU. 
2. It is the will of Parliament that the trade mark law of the UK should remain harmonized in this respect, as in many others, with that of the EU.  
3. Tribunals which are required to decide when the use of a sign does or does not, take unfair advantage of the reputation of a trade mark must do so upon some principled basis. The CJEU's judgment provides a principled basis for making such decisions. Aldi's submissions did not articulate any alternative principled basis for doing so. They amounted to an invitation to this Court to discard all of the existing learning on unfair advantage and to start again from scratch, but without providing any road map for that exercise. 
4. The ruling in L'Oréal v Bellure is not an isolated decision unlike the decision under consideration in Industrial Cleaning Equipment (Southampton) Ltd v Intelligent Cleaning Equipment Holdings Co Ltd. It built upon several earlier decisions of the Court CJEU. It had been applied in countless decisions of the General Court, the Boards of Appeal of the European Union Intellectual Property Office, national intellectual property offices of the Member States of the EU and Member States' national courts.  
5. The academic and judicial criticism of the CJEU's judgment in L'Oréal v Bellure cited by Aldi has been exaggerated and taken out of context.
6. Departure from L'Oréal v Bellure would cause considerable legal uncertainty.

Comment

There is a lot to unpack in Lord Justice Arnold's judgment.  

It appears that Judge Melissa Clarke's initial error was to identify the sign as "the overall appearance of a single can of the Aldi Product, and not merely one face of it" rather than "the graphics on the cans and on the cardboard 4-can pack" of the Aldi Product and not the Aldi product itself.  His lordship believed that she had erred because she had misinterpreted Thatchers's statement of case and failed to make her own independent assessment.  Because she had not identified the right sign she had understated the similarities between the mark and sign which in turn failed to alert her to Aldi's intention.  Lord Justice Arnold mentioned those errors in para [113] when he considered the trial judge's "clear error of principle" in not applying L'Oréal v Bellure or even discussing Thatchers's allegation of a "transfer of image."  As a result of those errors, she failed to find that the sign took unfair advantage of the trade mark within the meaning of s.10 (3) of the 1994 Act.  

The judgment provides some useful guidance on two other points:

• the circumstances when a s.11 (2) defence is available; amd
• when and whether it is appropriate to depart from a judgment of the CJEU.

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