Copycat Packaging - A member of the UK's CoolBrands® list gets 'Saucy' over its Trade Marks

31 July 2014

Toby Sears

The Saucy Fish Co. has brought an action in the English High Court against Aldi for trade mark infringement and passing-off over Aldi's packaging of its own brand of fish products.

The products in question can be seen below and here, both displaying vacuum packed fish on black plastic with a sleeve showing the brand and featuring a cut out fish shape displaying the product’s sauce.

Aldi's packaging on the left; the Saucy Fish Co.'s packaging on the right

Icelandic Seachill, the owner of The Saucy Fish Co., owns a CTM for THE SAUCY FISH CO., along with, amongst others, a UK registration for a series of six marks covering colour variants of their logo, including the mark below.

The dispute is still in the early stages but Aldi recently submitted to an injunction with a cross-undertaking as to damages from The Saucy Fish Co. This means that The Saucy Fish Co. will be liable for any losses Aldi incurs from the withdrawal of the product from its shelves in the event that they successfully defend the claim at trial. It remains to be seen if the case will progress any further as Aldi claims the product is no longer being stocked.

UK supermarkets selling potentially copycat goods is not a new phenomenon; Diageo began legal proceedings against Sainsbury's in 2009 over its 'Pimms' copy, the similarly branded 'Pitchers' product. However, that case was an exception as most brand owners are reluctant to sue supermarkets as they also sell original branded goods alongside. However, Aldi differs from the main UK supermarkets in that it generally does not stock the original brand items in store.

There is now increased awareness of copycat packaging practices in the UK and the government has considered introducing the potential for brand owners to seek injunctions when they cannot rely on their trade mark rights. The Department for Business Innovation & Skills ("BIS") and the Intellectual Property Office ("IPO") have held open consultations on the issue. The proposal would bring about an amendment to the Consumer Protection from Unfair Trading Regulations 2008 ("CPUT"). Although this could be beneficial to brand owners they do not tackle the commercial reasons that have historically deterred brand owners from enforcing their trade marks against supermarkets.

Interestingly the BIS consultation has been poorly received by the Trading Standards Institute ("TSI") who would prefer the local authority trading standards services to continue prosecuting misleading packaging under CPUT and businesses to remain with their existing trade mark and copyright rights. The TSI's concern is that the cost of bringing legal actions may limit these new powers to larger businesses thus resulting in unfair competition. An interim report from BIS is expected over the summer of 2014 in order to allow a final report to be published by September 2014.

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