The Saucy Fish Co. (owned by Icelandic Seachill) has recently secured a UK High Court agreed interim injunction against German supermarket chain Aldi, requiring it to stop selling copycat products.
One of The Saucy Fish Co. registered marks
Icelandic argued that Aldi's Saucy Salmon Fillets were "confusingly similar" to The Saucy Fish Co's products and infringed their registered trade marks. Icelandic Seachill owns the Community trade mark registration for THE SAUCY FISH CO. along with a number of other UK registrations for marks in various colour schemes, including the mark on the left.
The injunction was obtained by consent, and contained a cross-undertaking as to damages from The Saucy Fish Co. meaning 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.
5 years ago Diageo sued Sainsbury's over its 'Pimms' copy, the gin-based 'Pitchers', in what was a similarly high profile case. Such cases are rare however and generally speaking brands are afraid of suing supermarkets and other retailers because of the relationships that the brands have with them (in most cases the retailers are customers).
Aldi cannot rely on this protection in the same way that other major supermarkets can because they do not generally stock the real item next to their own products. So The Saucy Fish Co. were not worried about suing their own customers, which is often a key factor for brands in cases like this. With this initial success for the Saucy Fish Co. it is unlikely that the case will now reach trial and a settlement looks like the most likely outcome.
You win some, you lose some
It is not all bad news for Aldi however as the retailer has successfully defended a claim by Moroccanoil Israel Limited (MIL) for passing off. Both these companies sell their argan oil hair products "Miracle Oil" (Aldi) and "Moroccanoil" (MIL) using similar turquoise packaging with orange and white writing, however Judge Richard Hacon decided Aldi's product did not amount to passing off.
On whether Aldi had attempted to create a product which would remind the public of Moroccanoil, Judge Hacon wrote "I think Aldi intended to do so and succeeded, to the point that some of the public interested in hair oil thought that the similarities were cheeky and might infringe rights relating to design", however "that is not passing off".
MIL may still rely on their case for trade mark infringement. However, this claim has been stayed while the Office for Harminisation in the Internal Market considers claims for trade mark invalidity.
A new focus on copycat confusion?
These cases come at a time when copycat packaging practices are in the spotlight. The UK government is currently considering introducing a right to seek civil injunction for brand owners who cannot rely on trade mark rights as The Saucy Fish Co did. Following open consultation on the issue the Department for Business Innovation & Skills and the Intellectual Property Office are contemplating an amendment to consumer protection regulations that, if introduced, are likely to be welcomed by brand owners but the same commercial reasons that prevent them from enforcing their existing trade mark rights against supermarkets that are also their customers are likely to mean that the new powers are rarely used.