Some months ago, I read an article in a money magazine headed ‘Are Aldi’s ‘copycat brands good value for money?’. The piece went on to review 10 products across a diverse range of products including food detergents and make-up. The rating given to the various ‘copycat’ items varied but for most the reviews were positive, identified differences and where the copy product was not as good as the original but largely went on the say that for the price being charged one could not complain. There was a short section on legalities where a lawyer explained that supermarkets can get away with this sort of behaviour because the original brand owner often has to rely on bring a legal action called ‘passing off’. To succeed in this a brand needs to show that the supermarkets is misleading the public into believing that its goods are the original and further that based on that erroneous belief the brand owner has suffered loss and damage. Succeeding in such a claim is not easy at best of times. Where such a claims is made against Aldi, a business with a reputation from bringing out look alike products it’s even more difficult.
Against that background it was heartening to read that Charlotte Tilbury – make up doyen whose products are favoured by Ms Markle, Amal Clooney and Kate Moss to name but a few has successfully sued Aldi for copying her Filmstar Bronze and Glow palette. So how did she do it. Ms Tilbury’s palette sells for £49, the Aldi version for just £6.99. The price differential is surely a sign that the product is a copy. Despite this the judge in the High Court in London found that the similarities between Charlotte Tilbury’s range and the Aldi product called Lacuna Broadway Shape were substantial. Referring in particular to the copyrighted ‘starburst’ ray effect and the diamond impress housing the brands logo the judge found that the Tilbury design was an ‘artistic work’ that has been substantially copied.
The secret of success in this case therefore was not to rely on passing off, but on specific intellectual property rights that were attached to the product in question. By detailing these rights and pointing to the similarities between the protected elements of the Tilbury design and the Aldi design, Tilbury was able to secure a ruling in her favour.
This is a victory for brand owners and a lesson on how best to frame a case against a look-a-like product. On the back of this, one would hope that Aldi would show some reserve and express its wish to avoid infringing the intellectual property rights of others in future. Early signs that they have learnt their lesson are not encouraging however. Aldi will now pay damages to Tilbury to compensate her for the losses suffered as a result of their actions. But is this determent enough? Aldi have a bill to pay on this occasion but will likely continue to create look-a-like products that generate huge revenues as more often than not they get away with it. In this case Aldi denied being aware of the Tilbury design while Tilbury claimed they were aware and had set out to copy.
In this copyright case, intention is not particularly relevant. For the future however where design rights are in question it may be that brand owners will consider bringing a criminal action for design infringement which is available where a brand owner can show that a supermarket set out to copy. A conviction for design infringement leaves those in charge at Aldi with a criminal records and Aldi may receive a fine. Not the best thing to have to put on your CV but perhaps the only true deterrent available in the current legal regime.
If you would like to discuss how best to obtain protection for your brand please do not hesitate to get in touch with us on firstname.lastname@example.org or 020 7288 6003 and one of our specialist IP lawyers will be happy to have a consultation with you without charge.
Written by Margaret Briffa, Solicitor