Claim No: IP-2022-000076 - [2024] EWHC 88 (IPEC)

In its particulars of claim, Thatchers defines the Aldi Product in paragraph 14 in the following terms:

“In or around June 2022, the Claimant became aware that the Defendant had started to sell a cloudy lemon cider product (“the Aldi Product”), an illustration of a 4-can pack of which appears below:

”

It complains in the particulars of claim about “graphics on the cans and on the 4-can cardboard pack of the Aldi Product”, the “appearance on the Aldi Product” and the “graphics on the Aldi Product”. It compares a physical appearance of a single can of the Thatchers Product (rather than the Trade Mark said to be infringed) to a single can of the Aldi Product, and complains about the similarity of both cans. What it does not do, anywhere in the particulars of claim, is identify with any particularity what is the sign used by Aldi that it complains of as infringing the Trade Mark.

In its defence, Aldi raised this point, stating that Thatchers’ references to “graphics on” and “appearance of” of the Aldi Product lacked sufficient particularity. Thatchers filed a Reply stating that its case “related to the appearance of the Aldi Product as a whole, in comparison with the appearance of the Trade Mark and of the Thatchers Product as a whole”.

The matter came before His Honour Judge Hacon at a case management conference on 6 June 2023 in which both parties were represented by Counsel. The lack of definition of the sign complained of was raised by Aldi, and discussed. Aldi puts the transcript of that discussion before me. The result was the sign complained of (“the Sign”) was defined at issue 2 of the list of issues for trial attached as Schedule 2 to the CMC Order (“List of Issues”), as “the overall appearance of the Aldi Product, as defined in paragraph 14 of the Particulars of Claim”.

Mr Howe’s attempts to explain what the Court should take as the sign complained by Thatchers take up 6 pages of the transcript of day 1. His submissions included:

These are contradictory submissions in which the Sign is, variously said to be: both the 4-pack and the individual can of Aldi Product as a whole; a flat sign placed on the front and rear of an individual can of Aldi Product; a flat sign put twice on the cardboard packaging of the 4-pack of Aldi Product (but different from the flat sign put on the front and rear of an individual can of Aldi Product); the overall appearance of the Aldi Product which is the individual can; and that seen on the front face of the individual can of Aldi Product.

Ms Wickenden objected to this in her opening, saying “They have only ever said that they rely on the whole product, which caused us some confusion as the whole product is not usually considered a sign. They have had multiple opportunities to move away from that or clarify it, but they have always repeated that what they mean is the entirety of the [Aldi] Product is the Sign… that is what their pleaded case is. The pleaded case is the whole four-pack. If they want to say it is the whole can, then I am not going to take the point so strongly on that. But what my learned friend cannot do, and what he has just done, is stand up and say, “We complain of the sign as depicted on the front of this can and again on the back of the can and on the side of the packaging” when their pleaded case has always been that whole product is the Sign”.

Ms Collett for Thatchers addressed me further on this point in closing, taking me to the draft list of issues which was before HHJ Hacon at the CMC, and also to the transcript of the CMC, before submitting that the Sign is the whole appearance of a single can of Aldi Product, and that was what the parties understood to be the case at the CMC. I am grateful to her for clarifying Thatchers’ position.

Nonetheless, this is unsatisfactory. As Mr Howe himself submitted during the course of his opening on this point, lists of issues at a CMC are not pleadings and are not meant to do the job of pleadings. I accept that the List of Issues is intended to record what Thatchers said at the CMC it meant by its pleadings, and it is, in my judgment, only fair to hold it to that as that is the basis on which Aldi has prepared for this trial. The alternative is to find that if Thatchers has not identified in its pleaded case – and at trial - what is the sign complained of with sufficient particularity, it cannot succeed on trade mark infringement. Aldi has not sought to make that argument.

In my judgment that which is identified as the Aldi Product in paragraph 14 of the particulars of claim is a single can, not the 4-pack, and this can be discerned by the wording “a cloudy lemon cider product (“the Aldi Product”), an illustration of a 4-can pack of which…” (my underlining for emphasis). This must be a 4-can pack of Aldi Product, making the Aldi Product a single can. Ms Collett says there is support for this in the transcript of the CMC hearing and I accept there is. Accordingly the Sign is the overall appearance of a single can of the Aldi Product, and not merely one face of it.