T h e
I m i t a t i o n
G a m e :
Tackling Lookalikes in the New Legal Landscape
LAYTONS ETL Yarnwicke, 119 - 121 Cannon Street, London EC4N 5AT +44 (0)20 7842 8000 www.laytons.com
INTRODUCTION Alec Cameron, IP Partner and Head of IP Disputes and Justin Bukspan,
Director of Trade Marks Laytons ETL, explore how strategies for tackling lookalike packaging designs have evolved following the Court of
Appeal’s decision in Thatchers Cider Company v Aldi Stores [2025]
EWCA Civ 5 (CA Decision).
THE LOOKALIKE PROBLEM Established brand owners have long faced challenges
The CA Decision has accelerated this trend with
from lookalikes across a wide range of product sectors
the result that s10(3) TMA has emerged as the
including food and beverage, toys, fashion, personal
preferred weapon of choice for tackling lookalikes.
care and beauty. These products are commonly sold online or in discount stores or budget supermarkets.
Recap of CA Decision
Lookalikes emulate the distinctive features of their targeted packaging, e.g. colour, shape and/or overall design. These features are often less well protected than the brand owner’s name or logo (generally avoided by lookalikes), yet may still heavily influence consumer purchasing behaviour. Successful lookalikes may rapidly gain market share with no or minimal advertising spend by free riding on the reputation of the household brands which they emulate.
Traditional legal action
In Thatchers the claimant had successfully established its ‘cloudy lemon cider’ following years of investment in product development and marketing. Aldi subsequently launched a competing own-label ‘Taurus cloudy cider’. Thatchers complained that the packaging for Aldi’s product (Aldi Sign) was too similar to its own, which it had registered as a trade mark (Registered Mark).
Brand owners have often struggled to succeed with enforcement actions against lookalikes based on the traditional claims under s10(2)(b) Trade Marks Act 1994 (TMA) and passing off. Imitators have become increasingly skilled at creating a link in the mind of the average consumer with an established brand by emulating its packaging, but without deceiving the consumer or creating ‘a likelihood of confusion’ as to their product’s trade origin.
s10(3) TMA: preferred weapon Brand owners have increasingly relied on s10(3) TMA claims to tackle sophisticated lookalikes given the absence of any requirement under this cause of action to prove either a ‘likelihood of confusion’ or consumer deception. Instead, it is sufficient to establish that the claimant’s registered trade mark has a ‘reputation’ (a relatively low bar) and that the defendant has used a similar sign “without due cause” which “takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”
(i) Aldi’s Taurus Cider packaging (ii) Thatchers original branding
Following the rejection of its claims under s10(2) (b), s10(3) TMA and passing off by the Intellectual Property Enterprise Court (IPEC), the claimant appealed the decision on s10(3) TMA infringement only. In January 2025 the Court of Appeal handed down its unanimous decision in favour of Thatchers, holding that there had been s10(3) TMA infringement by the defendant. Giving the lead judgment Arnold LJ affirmed the finding of the IPEC judge that the Registered Mark had a reputation and held that the Aldi Sign gave rise to a ‘link’ in the mind of the average consumer with the former mark. An inference of ‘unfair advantage’ could be made from Aldi rapidly
achieving high sales of its Taurus cider product “without
Shift in enforcement strategy
spending a penny promoting it” and, unlike Thatchers, using substitutes for real lemon juice. Aldi had not
Following the CA Decision, brand owners are less willing
been “competing purely on quality and/or price and
to tolerate lookalikes. Litigation has become more
on its own promotional efforts” and instead it sought to
focused on arguments around the reputation in the
communicate the message that it was “like Thatchers,
claimant’s marks and whether the defendant has taken
only cheaper” by taking ‘unfair advantage’ of the
‘unfair advantage’ of the reputation in those marks.
Registered Mark.
Other causes of action may still be relevant but, in some instances, claimants may opt to run streamlined
In those circumstances, s10(3) TMA infringement was
claims based on s10(3) infringement only. Brand
established. The fact that consumers knew they were
owners will generally secure packaging trade mark
buying an Aldi product did not allow the defendant to
registrations (not merely make filings) prior to engaging
escape liability.
infringers to avoid inviting oppositions to their filings or
Where are we now? In June 2025 the Supreme Court refused Aldi permission for further appeal. Eighteen months on from the CA Decision, where do matters stand for brand owners seeking to combat lookalikes?
Shift in filing strategy The practice of filing packaging trade marks has accelerated following the CA Decision. Packaging marks seek to protect the whole visual identity of a brand as seen on the supermarket shelves by consumers. This approach contrasts with the traditional narrower filings for names, logos etc. on their own, which only protect the core elements of a brand’s visual identity. In addition to the front label, brand owners may also apply to register 3D marks which feature the product’s overall container shape together with the logo, artwork and other elements of the packaging. Today, graphic elements that were previously deemed too descriptive for protection as part of a registered trade mark are more likely to be protectable. These practices support s10(3) TMA enforcement actions. Brand owners may complain about a third party’s packaging in its entirety rather than being limited to relying on core aspects of the brand identity only. Often it is the combined effect of all the features emulated which is objectionable. Trade mark registrations for packaging also capture ‘inessential details’ which Arnold LJ observed often “gives away copying” when reproduced in the lookalike sign.
complaints of making unjustified threats.
Monitoring competitors Brand owners increasingly monitor competitors to
‘benchmarking’, a practice which remains lawful, and
check whether the designs of their products change
activities falling foul of s10.3 TMA. Application of the
over time. Gathering evidence of ‘packaging creep’,
CA Decision to other categories of goods, such as
where new features are introduced by stealth , assists
cosmetics and beauty, would clarify whether the CA
brand owners to establish deliberate packaging design
Decision is of general application or whether sector-
emulation by a third party. Where a competitor departs
specific principles may emerge to reflect different
from its usual ‘house style’, it also provides helpful
purchasing environments and expected consumer
evidence from which an intention to emulate a rival’s
behaviour.
packaging design may be inferred. If you are a brand owner needing advice on enforcing
Social media evidence
your trade mark rights against lookalikes or a party needing advice on bringing a new product to market,
The gathering of social media evidence has also assumed greater importance. Social media posts, whether from lookalike producers themselves or from
our IP Disputes team can help you.
The authors:
influencers promoting a lookalike as a ‘dupe’ for the claimant’s product, may help to establish the required ‘link’ in the minds of consumers between the parties’ respective packaging.
Alec Cameron Partner | Head of Intellectual Property Law Dipsutes alec.cameron@laytons.com
Disclosure evidence Evidence obtained through disclosure, for example as to briefings made to external design agencies, may also be of critical importance. In Thatchers, it was revealed that Aldi had instructed its external agency to produce “a hybrid of Taurus and Thatchers” which harmed their defence.
Challenges ahead Brand owners do, however, continue to face challenges in this area. Retailers selling lookalikes may leverage their existing commercial relationships with the brand owner. For example, if a defendant stocks product lines made by the claimant it may use that economic dependency to pressure the claimant into early settlement. It is therefore key for brand owners to review with their lawyers the nature of business relationships with their distributors when assessing the commercial dynamics as well as the objective merits of possible legal action. Further case law applying and interpreting the CA decision would also be welcome, e.g. as to the precise relationship between legitimate packaging design
+44 (0)20 7842 5404
Justin Bukspan Director of Trade Marks | IP and Technology justin.bukspan@laytons.com +44 (0)20 7842 5419
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