Can lookalike products be considered to take unfair advantage of a branded product?

Recently the Court of Appeal has considered whether products in packaging that look like branded products can be deemed to take unfair advantage of that brand.

In the case of Thatchers Cider Company Limited v Aldi Stores Limited [2025], the Court of Appeal held that Aldi had taken unfair advantage of Thatcher’s trade-mark products by packaging their cloudy lemon cider in a very similar way to Thatchers.

Thatchers initially tried to make a claim that Aldi was causing consumer confusion and that they had taken unfair advantage of their trademark. This was dismissed by the Intellectual Property Enterprise Court, and Thatchers chose to appeal only the claim in relation to unfair advantage which was ultimately successful at the Court of Appeal.

So, what is meant by unfair advantage?

Under section 10(3) of the Trade Marks Act 1994, the following nine requirements must be satisfied:

(1) The trademark must have a reputation in the UK
(2) There must be use of a sign by a third party within the UK
(3) The use must be in the course of a trade
(4) The use must be without the consent of the owner of the trademark
(5) The use must be of a sign that is identical or similar to the trademark
(6) The use must be in relation to goods or services
(7) It must give rise to a link between the sign and the registered trademark in the mind of the average customer
(8) The use must give rise to one of three types of injury; and
(9) The use must be without due cause.

The leading case of L’Oreal SA and others v Belure NV and others also established that the defendant must have an intention to deceive the customer.

The Court of Appeal ultimately held that as Aldi had defaulted from their usual packaging, although they had not tried to deceive the average customer as to the origin of the product, they had tried to remind them of Thatchers’ product which ultimately led to them to purchase the cider. It was therefore held that they had taken advantage of Thatchers’ reputation as a means to boost the sales of their product. The Court of Appeal therefore approved Thatchers’ claim.

What is the significance of the Court’s decision for trademark infringement cases moving forward?

This is significant and it shows a brand owner can bring a successful unfair advantage claim where it has registered well-known packaging as a trademark and a third party sell’s products in similar lookalike packaging as a means to boost sales.

If you require legal assistance regarding trade mark infringement, and/or you would like additional advice regarding the impacts of the recent Court of Appeal decision, please do not hesitate to contact our Commercial Solicitors on 01604 344512 / 01908 044759 or email info@franklins-sols.co.uk

There are many forms of business relationships available to business owners. Franchising is most definitely an efficient strategy for growth as it allows businesses to expand rapidly and potentially become a national or worldwide name.

Franchising is the act of one person (the franchisor), granting to another (the franchisee) a license to operate the franchisor’s business by using their brand, products and method of operation in exchange for a fee.

As for any new business model, there are various elements to take into consideration when becoming a franchisor.

  1. Becoming a franchisor

To become a successful franchisor, it is important to consider the following steps:

Business model evaluation: it is important for a business to assess whether its business model is achievable as well as ensuring that its brand has the required market appeal.

Business plan: franchisees must understand a franchisor’s business. To facilitate this, developing a strong business plan is highly recommended. This is so a franchisor can detail the structure of the business, the roles and responsibilities of both franchisor and franchisee. This would also allow a franchisor to set out estimates in terms of finance and marketing strategy.

Operations manual: developing a detailed operations manual is one of the most important aspects of the franchising process. The manual will govern the way the franchisee will conduct the franchise business in setting out instructions for the day-to-day operations of the business. This manual should ultimately be classified as confidential as it will contain the business’ know-how and the secrets of its success.

Pre-contract disclosure: a franchisor is no obliged to make pre-contract disclosures. However, on the franchisee’s point of view, it would be more prudent for the franchisee to undertaken due diligence in order to understand the franchise and gather information on its success to make an informed decision before getting into business.

Intellectual Property rights: as a franchisor will have developed know-how and created some brand awareness, intellectual property rights would more than likely have significance when franchising a business. It would be advisable for franchisors to seek to protect such intellectual property rights.

Often, patent protection is unlikely to be necessary as franchises will not use a patented process. Copyright and trademarks are on the other hand of significance. Copyright will give protection to original literary and artistic works which can cover advertising slogans. Trademarks will bear the greater significance as it will protect the brand name and image of the franchising business. Before registering for a trademark, franchisors should consider the following:

Selection of franchisees: it is important that franchisors undertake a rigorous selection of franchisees to ensure each candidate’s suitability.

Training of franchisees: it is crucial for franchisors to have in place a strong training and support system for franchisees as this will provide franchisees with the required skills and knowledge to run the business effectively and successfully.

  1. Advantages of becoming a franchisor

There are many benefits of franchising a business. Here is a list of some of these advantages.

Business growth: franchising a business allows to facilitate the expansion of a business and its network more easily without having to invest a lot upfront. By setting up a franchise, franchisors can focus on developing new ideas while franchisees manage the day-to-day operations of the business.

Brand development: franchisors would gain access to new territories by allocating various locations to franchisees which will promote the brand as well as the business’ reputation.

Constant cash flow: franchisors will benefit from steady income with minimum risks from the franchise fees and ongoing royalties.

Risk mitigation: financial and operational risks are always a concern when expanding a business. However, in the case of franchise, these will be shared with the franchisees.

  1. Disadvantages of becoming a franchisor

Although the disadvantages of becoming a franchisor are lesser than the benefits, these still need to be considered.

Reputation: a franchisor’s reputation, and by extension its business, can be affected by franchisees. This can be due to poor performance or staff behaviour, which is why the franchisee selection process is a crucial step when creating a franchise.

Shared profit: as mentioned above, it is a benefit that the risks are shared between franchisors and franchisees. However, this also means that profit from franchisors’ idea is shared with franchisees.

Sharing confidential information: franchisors need to ensure that their franchisees are committed to the brand and business and do not disclose confidential information. It is therefore highly recommended to have in place watertight contracts to protect trade secrets.

Management: franchisors’ guidelines, practices and overall instructions do restrict what franchisees can do. However, they are not the franchisors’ employees and therefore, franchisors do not have management control over them. As a result, having a rigorous franchisee selection process, proper training and clear operations manual is critical for the good performance of the business.

It is undeniable that franchising a business comes with many benefits and would be one of the most effective ways to expand a business successfully. Nevertheless, this is not a process which can be hurried, and it is highly recommended to seek legal advice to fully understand a franchisor’s rights and obligations. Our commercial team has a wide range of experience in advising franchisors and would be delighted to assist individuals and businesses with any queries.

For further advice and assistance, please contact our Commercial Solicitors on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

The power of a registered trademark –

The Dutch chocolate brand, Tony’s Chocolonely is known for its ethical attitude and commitment to combating child labour in the cocoa industry by making their chocolates 100% exploitation free.

In a new marketing campaign that was unveiled in Germany and Austria, Tony’s launched four new temporary parody chocolate wrappers with an aim to enhance the visibility of exploitation within the cocoa industry.

One of the new parody wrappers had a resemblance to the iconic bar for its particular lilac colour produced by major industry company, Milka.

The campaign has caused controversy in the chocolate industry as Milka’s parent company Mondelez has accused Tony’s of trademark infringement and filed an injunction over the copycat campaign.

Tony’s appealed the injunction but still agreed to comply in the meantime by changing the parody packaging from lilac to grey.

This is not the first time Tony’s campaigns have made headlines. Back in 2021, the company deliberately left one of its advent calendar windows empty and received a lot of complaints as a result.

It will be interesting to see how the case unfolds with the Dutch brand Tony’s being subject to legal proceedings as a result of its parody campaign. This case certainly does provide a useful reminder to companies when it comes to protecting one’s mark. The trademark registration will offer the maximum legal protection against other competitor companies.

If you would like to discuss what this case may mean for your business, or you would like to explore the possibility of registering your own trademark then please do not hesitate to contact our Commercial Solicitors on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

 

L V Bespoke, a family-run business based in Norfolk, recently won a trademark dispute against the fashion giant, Louis Vuitton, after a two-year legal battle.

Back in 2020 when lockdown hit the country, Mr and Mrs Osborne founded L V Bespoke. They had a  view to create steel plant supports and other home and garden products.

They decided to register L V Bespoke as a trademark as their business looked like it was taking off. Unfortunately, they received a letter from the Louis Vuitton legal team.

The fashion label argued that by registering the trademark “L V Bespoke”, there would be confusion in the eyes of consumers. Such confusion could also work for the benefit of the couple. According to them, the use of L V Bespoke would “take unfair advantage of, or would be detrimental to” Louis Vuitton’s earlier trademarks. 

Mr and Mrs Osborne decided to fight the objection. They argued that their metalwork products are clearly different than the metalwork found in Louis Vuitton’s handbags. The couple thought it was “surreal” to compare both metalwork and imagine that there could be any sort of confusion. This is what the judge, Matthew Williams, ruled in favour of.  According to him, “almost all of L V Bespoke’s goods were self-evidently dissimilar” to Louis Vuitton’s products. He added that “the only point of commonality is the presence of the same two single letters “L and V”.

Mr and Mrs Osborne spent almost over £15,000.00 in legal proceedings and lost two years of potential business growth. The judge however ruled in their favour and ordered Louis Vuitton to pay their costs and £4,000 in damages.

Intellectual Property Law can be delicate and a source of great stress when entering into a dispute. Whether in relation to trademark, copyright, patent, or passing off, the rules around Intellectual Property Rights can be difficult to navigate. Our commercial team has a wide range of experience when it comes to Intellectual Property and infringement of IP Rights and would be happy to assist both individuals and businesses with any issues relating to Intellectual Property.

For further advice and assistance please contact our Commercial Solicitors on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

The video game industry is constantly expending with not only multi-national corporation but also small publishers who develop games worldwide making it a multi-billion-dollar global market. From developers to publishers and distributors, all parties involved in this industry have to navigate complex legal issues. These include, amongst other things, licensing.

Video game licensing encompasses areas such as intellectual property law, contract law and competition law.

  1. Copyright

Video game licensing is partly governed by copyright law as video games are considered to be literary and artistic works, which are protected under copyright law.

Under copyright law, the inventor of the game will be the owner of it and will therefore get exclusive rights to reproduce or distribute the game. With licensing, this allows the owner to grant specific rights to third parties (i.e. distributors, publishers etc) for a consideration.

  1. Trademark

When creating a video game, developers will often include distinctive names or logos. Under trademark law, these would be protected against unlawful use by third parties. However, licensing would play a significant role in the development and distribution of the game worldwide. As for copyright, the owner of the trademark would license the right to use the trademark, therefore allowing third parties to use the names, logos or character.

This would be the case when merchandise is developed, such as clothes, figurines or goods in general.

Notwithstanding the above, there are a wide range of elements to take into consideration when preparing a licence agreement and specific provisions would have to be included within such a document, such as:

Video games licensing is a complex field of law and our commercial team would be happy to assist companies with the process.

For further advice and assistance please contact our Commercial Solicitors on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

There is a constant evolution of the technology which impacts the use we make of media platforms. This can be seen through the development of social media. With the never-ending creation of new platforms, there is a need to adapt the rights and protections that come with the use of these services.

Intellectual Property (IP) plays an important part when it  comes to media and entertainment law. Mainly because media refers to artistic works, whether it is via making a movie, composing music, using social media or the internet in general. An individual or a business would therefore be looking to protect their creation and work.

IP refers to creations of the mind, whether literary and artistic or designs, symbols etc.  There are many types of IP and the most known are patents, copyrights or trademarks. It is very important to have IP rights in place, especially in the media and entertainment world. Without the protection of these rights, the chances for infringement will be higher.

  1. Copyright

A copyright protects one’s creative work. It gives its owner the exclusive right to copy, distribute, adapt, display and perform a creative work. The owner will benefit from the works being registered to a public record and therefore get protection from the usage of others without their permission.

Some examples of copyright works would be a novel, a photograph, lyrics to a song, a sound recording, or a movie. Most recently, the singer and songwriter Ed Sheeran faced a trial as he was accused of infringing the copyright of Martin Gaye’s song “Let’s Get It On”. Although he was later found not guilty of the infringement, this was still a long process which could tarnish someone’s image and reputation.

It is therefore incredibly important for inventors to record their works and how they arrived at them so that they can benefit from the protection of IP rights.

  1. Patent

Just as with copyright, a patent will protect the innovation of a person by excluding third parties from making, using or selling an invention for a limited period of time. In exchange, the inventor will have to publish a disclosure of the invention. By doing so, the inventor will have the monopoly of use of this invention for a period of time.

In the entertainment industry, patents will generally be used to protect technological advancements in production or distribution of content. One of the most famous patents filed would be for a 3D film process by William Friese-Greene. There is also the famous film director, James Cameron, who through the development of filming tools and techniques contributed to the immersive experience for the audience.

  1. Trademark

Trademark refers to any word, phrase, symbol, design or a combination of these that identifies a product or service. In the media and entertainment industry, trademarks will be used to protect a brand, merchandise, movie title, music or even a character.

Examples of trademarks would be “Netflix” or “Pixar” or movie titles such as “Star Wars” or “Harry Potter”. These would prevent anyone from creating a name and/or logo with the same font or colour which could lead to confusion as to whether the movie is part of a famous franchise.

  1. Images

In spite of the rights an individual or a business can have to protect their invention, there is nevertheless an issue in the entertainment industry around celebrities and their image. It is with no doubts that you have already come across photos or videos of a celebrity in the streets or having dinner. Most of the time, these are used without their knowledge or consent, and it is a problem, especially in the UK, since there are not any statutes or case law which covers it.

Most celebrities are paid to endorse a product and therefore use their image, although there is still a possibility that companies will use a celebrity’s face without their consent which can open a claim for passing off. A famous case was in 2012 when the clothes retailer Topshop used Rihanna’s image on its t-shirt. Although the retailer had a licence to use the photo from the photographer who took it, it did not have a licence from the singer herself. Rihanna therefore sued and succeeded on the grounds that using her image without her approval was an act of passing off.

There is a right to privacy under Article 8 of the European Convention on Human rights which would apply to celebrities. It is undeniable that intrusion in their lives can happen, if photos were taken in a private setting, a claim for breach of privacy may arise. This would however need to be balanced against the right to freedom of expression under Article 10 of the European Convention on Human rights.

In any case, it is highly recommended to take legal advice when it comes to Intellectual Property rights. Our commercial team would be happy to provide assistance to individuals or businesses on issues relating to Intellectual Property.

For further advice and assistance please contact our Commercial Solicitors on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

The famous American hard rock band, Guns N’ Roses, are taking legal action against a Texas based gun store for trademark infringement.

‘Texas Guns And Roses’ is a Texas based online store that sells firearms, ammunition related apparel along with flowers. The American rock band, Guns N’ Roses (GNR), has filed a trademark infringement claim against the store for damages whilst alleging the store created its name “for the purpose of confusing consumers into believing that it was connected or associated with, or licensed by, GNR.”

Local newspapers have stated that despite GNR’s numerous attempts of sending cease and desist letters to the store in 2019, the store continues to “intentionally trade on GNR’s goodwill, prestige and fame without GNR’s approval, license or consent”. The store’s attorney has told local news that “There’s never been any confusion and they have no evidence of confusion. This is an attempt to run up costs and burn us out“. However, GNR have requested the store to change its name and pay damages for the alleged trademark infringement.

What is a trademark?  

A trademark is any sign which can distinguish the goods and services of one trader from those of another. A sign can include for example, words, logos, pictures, or a combination of these. A trademark is essentially a badge of origin which is used so that customers can recognise the product of a particular trader. They are therefore closely associated with business image, goodwill and reputation which is demonstrated in the Guns N’ Roses case mentioned above. Amongst many others, top trademarks include Apple, Microsoft, Coca-Cola and Kellogg’s.

Trademark Infringement

The Trade Marks Act 1994 (TMA) implemented the 2008 Trade Marks Directive and the 2015 Trade Marks Directive. A simple explanation of a trademark infringement is where a registered trade mark is used in the course of trade without the proprietor’s consent. The TMA uses the following instances as examples:

Section 10 (1) Trade Marks Act the sign used by the unauthorised third party is identical to the registered trade mark and is utilised in relation to goods or services which are identical with those for which the trade mark is registered.

The sign used by the infringer is:

Section 10 (2) Trade Marks Act in each case mentioned above, there exists a likelihood of confusion on the part of the public, which includes a likelihood of association. In the case of GNR mentioned above, GNR did not want to be associated with the defendant given the nature of Texas Guns and Roses’ business. 

Section 10 (3) Trade Marks Act where the trademark used by the infringer is identical with or similar to the registered trade mark, the trade mark has a reputation in the UK, and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

To establish infringement, it is necessary to establish the following key elements:

Breach of Trademark Law

There are a vast range of remedies available to the proprietor of a registered trade mark if successful in proving trademark infringement. These include:

 Defences to Trademark Infringement Claim

The TMA, specifically s.11 provides exceptions to trade mark infringement claims which could apply even if the trade mark is already registered. In other words, you may be able to use a trademark and successfully defend an infringement claim. These include the following:- 

 For further advice and assistance please contact our Business Services Team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

 

The libel case involving football players’ wives Rebekah Vardy and Coleen Rooney resulted in what the BBC called a “humour” trademark registration.

The dispute between the two personalities began in 2019 when Coleen Rooney accused Rebekah Vardy of leaking posts from her private Instagram account to The Sun. Vardy subsequently sued Rooney for libel in 2020 and the case was heard in May 2022. Unfortunately for her, Vardy’s claim was dismissed by the court on the basis that Rooney’s statements were substantially true. The case was widely relayed by media as the parties are what the British media called “WAGs” (Wives and Girlfriends of high profile sportsmen) and, because of the steps taken by Rooney to investigate, the case became popular and known as the “Wagatha Christie” case.

The BBC reported that following her defeat in July 2022 when the case was dismissed, Vardy decided to trademark the phrase “Wagatha Christie” and applied for it to be registered in the UK in August 2022. The trademark was then officially registered in April 2023 and includes everything from broadcasting to beauty lotions to stationery, jewellery or even fashion design.

In simple words, a trademark encompasses a wide range of different distinguishing signs such as any words, phrase, symbol, design or a combination of all of these that identifies a good or service. Registering a trademark provides the owner with an exclusive right to use the registered trademark and it can be licensed to someone else in exchange of payment. The owner of the trademark will also have legal certainty in the event of dispute.

By registering the “Wagatha Christie” trademark, Vardy managed to pay off her legal costs from the trial as it was reported that the court ordered her to pay 90% of Rooney’s legal fees of circa £1.5million. This is because anyone who wishes to use the expression in a commercial way will have to get Vardy’s permission and pay her and this dispute was not only reported in the news, it was also adapted into a play and a TV show called “Vardy v Rooney: a courtroom drama” on channel 4.

This is a great example of how registering a trademark could be useful in protecting its owner’s rights but also turn out to be quite lucrative.

For further advice and assistance please contact our Buisness Services team on 01604 828282 / 01908 660966 or email info@franklins-sols.co.uk

Multi-Million pound company Oatly recently took a UK family run business – Glebe Farm Foods to court over a trademark dispute. Lawyers for Oatly claimed that Glebe Farm, which rebranded its Oat Drink product as PureOaty in 2020 (previously known as “Oat drink”), intended “to bring Oatly’s products to mind”, benefiting from Oatly’s brand. They also claimed that the name PureOaty was similar to Oatly, as was the product’s blue packaging and image of a teacup. Ruling in favour of the farm, Judge Nicholas Caddick QC, said while there were similarities between the initial PureOaty packaging and the Oatly packaging, including the use of the colour blue and the use of an irregular font for the product name, these were “at a very general level”.

Photo by Toa Heftiba Şinca from Pexels

Philip Rayner, Glebe Farm’s owner and managing director, said: “It is enormously gratifying that the judge has ruled in our favour, and to see that smaller independent companies can fight back and win. We can now forge ahead with PureOaty and our oat milk enterprise.” Oatly said it fully accepted the court’s decision and would not file an appeal. It said that while for some this might be seen as vindication for small oat drink companies over big oat drink companies, for the Swedish group, “this case has always been about protecting our trademark and how the single letter Y creates too much of a similarity between Oaty and Oatly”.

If you have any enquiries relating to trademarks and intellectual property, please contact Christopher Buck on 01908 660966 / 01604 828282 or email Christopher.buck@franklins-sols.co.uk