David vs Goliath: Gill Jennings & Every attorney suggests smaller brands can win trade mark wars

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By Edward Carstairs, trade mark attorney at Gill Jennings & Every 

It’s no secret that Aldi and Lidl have made a name for themselves in recent years with their strategy of developing own-brand products whose packaging and other branding mimic their better-known but more expensive counterparts.

This strategy has from time to time seen conflicts arise, but the supermarkets now stand accused of having gone too far, recently moving from “punching up” at big brands to imitating popular smaller ‘cult’ brands – including Fever Tree, Graze, and the family-owned sausage company Heck. These smaller businesses are now looking to fight back, both through threatening legal action and by attempting to rouse consumer support on social media.

In disputes over the appearance of products where there are no relevant trade mark registrations, in the UK ‘passing off’ may sometimes be used to successfully enforce unregistered trade mark rights. This will include the use of identifying common words, shapes, or colours that may cause customers to confuse one brand for another –- or a combination of all three as the overall “get up” of a product, which will generally strengthen the case of the victim of passing off.

In the case of Heck and The Collective, there would appear to be evidence that some consumers have indeed fallen victim to such confusion. This is useful ammunition that can help to persuade a court, should the dispute make it that far.

But it is important to note that such cases can only succeed if the misrepresentations could genuinely deceive consumers about the origins of a product, resulting in a negative impact on the aggrieved company’s sales or reputation, rather than just one or two inattentive consumers in a bit of a hurry. This is where businesses claiming passing off may find themselves faced with more of a challenge.

Courts recognise that today’s savvy consumers are very aware of ‘clever’ marketing campaigns such as Aldi and Lidl’s brand imitation, and the supermarkets are very careful to push right up to the line of what is permitted. Whilst on the legal side such action may not pass off or infringe earlier rights, their decision to adopt the same tactics with a host of smaller cult brands, however, has proved to be a step too far.

While the smaller brands may not be guaranteed success should they decide to take legal action, they have shown that there are other ways to fight back and put commercial pressure on the supermarket giants.

The first step is always to register for some form of protection for your intellectual property, whether that’s protecting your brand name or the associated distinctive shapes, colours, or patterns. This can be done easily by going down the trade mark registration route. Alternatively, businesses can also secure design registrations, which are quick and straightforward to pursue and provide protection for the shape or appearance of a product. Design applications can register within a few days. Documenting the creation of a brand and its commercial success can also provide valuable evidence when alleging unregistered rights.

At the very least, pointing to registered rights in correspondence at least provides leverage with the implicit threat of legal proceedings. However, Heck and The Collective’s approach has also shown that social media and driving commercial awareness can also be used alongside the legal battle as a powerful tool to put pressure on the likes of Aldi and Lidl.

This can be especially effective in the earlier stages of the dispute, where smaller brands can begin by mobilising public support alongside evidence that demonstrates their unique market positioning, such as how long they have been established and how they have gone about carving out their niche. The leverage this provides by co-ordinated outspoken social media criticism could result in supermarket giants taking their ‘imitations off the shelves or providing some form of settlement payment to make up for any damage to sales or reputation.

There have been some cases where aggrieved parties have approached the supermarkets privately in the first instance, only to receive threatening or defensive letters in response. If such letters make their way to social media then they can increase your support in the forum of public opinion.

When imitation products appear it is an opportunity for the smaller businesses to differentiate their own cult brand by highlighting for example the careful selection process and provenance of the ingredients as well as the detail involved in preparing the carefully crafted final product, and which all leads to a higher quality consumer experience. Mobilising social media and the press means that such a story can become very widely read and well-received so that the smaller brands can tell their own unique brand story.

Generally, a legal approach alone is not the most effective way for smaller businesses to protect their intellectual property, but that does not mean small brands are completely powerless. The public backlash we have witnessed has already had some effect and, if Aldi and Lidl are not careful, they may find themselves playing Goliath in the eyes of the consumer.