24 Oct Can you stop Aldi copying your product?
Following a well-publicised case over Aldi selling a copycat Charlotte Tilbury product, Serjeants explains how the product was banned from sale despite Aldi not infringing any trade mark registrations.
The Aldi business model
Aldi’s business model involves the sale of many lookalike products that don’t quite infringe the brand owner’s intellectual property rights. They are very careful to use brand names that are very different from the brand owner’s trade marks but do so alongside packaging that is very similar, but not identical to, the brand’s packaging. The result is that a shopper knows which product an Aldi product is imitating, even though it might be called something very different. As an example, the Aldi version of a Mars® bar is called Titan.
Copyright infringement over trade mark infringement
However, this business model has fallen down in one recent instance; a £5 Aldi powder compact that looked eerily similar to a £49 Charlotte Tilbury compact was sold in December 2018. As always, Aldi were careful to use a very different brand name so there was no cause for trade mark infringement.
However, in Islestarr Holdings Ltd vs Aldi Stores Ltd in the UK High Court, the owners of the Charlotte Tilbury brand took action for copyright infringement, rather than trade mark infringement.
The relevant compact has a distinctive and protectable appearance, both on the outside of the compact and embedded in the powder itself, that was replicated in the Aldi product. During the infringement proceedings it became clear that Aldi were aware of the Charlotte Tilbury compact when designing their own, so they had little defence that they did not copy the design.
As a result, Charlotte Tilbury was awarded an injunction against the continued sale of the Aldi product as well as costs and damages that are yet to be determined.
What impact does this have on Aldi?
Despite losing the case over their compact powder, it is unlikely that Aldi will be too disgruntled by this decision; this is only one of their many lookalike products and the costs and damages awarded are unlikely to be too high and therefore won’t have any significant impact.
So, can you stop Aldi copying your product?
The short answer is yes, but with difficulty; you’ll need to prove infringement of an intellectual property right, for example copyright, as in the Charlotte Tilbury case. Aldi’s business model inevitably incurs infringement risks, but it is only on rare occasions that they are found to infringe.