Irwin Mitchell’s Head Of Intellectual Property, Alex Newman, Discusses Imitation Products Case

Expert Intellectual Property lawyers from Irwin Mitchell say that the proposed Aldi lawsuit isn’t straightforward as the law on registered trade marks, passing-off and copyright doesn’t draw clear lines between what is lawful and what isn’t lawful.

This comes after news that sausage firm, Heck, and yoghurt maker, The Collective, are proposing legal action against German supermarket Aldi for selling alleged copycat versions of their products.

Aldi is selling the alleged imitation products for much less than the price charged by the independent manufacturers, leading some companies to ask Aldi to stop selling their copycat products. Aldi denies any wrongdoing.

Irwin Mitchell’s Head of Intellectual Property, Alex Newman, spoke on BBC Radio 5 Live and BBC Radio West Midlands to discuss how far supermarkets are legally allowed to go when creating their own-brand item.

Expert Opinion

“With the Aldi case, there are a number of intellectual property rights that come in to play in these sort of scenarios. First and foremost, market leading brand owners will look at registered trade mark law, and passing off and copyright law can also come in to play. The difficulties which the market leading brand owners face is that the law isn't clear when drawing lines between what is lawful and what isn't.

“Companies making copycat products push as close to the line as they can get without infringing. The law doesn’t set those clear and fast lines so we have more ambiguous concepts to consider: is there likely to be confusion? Is the package of a particular product misrepresenting itself as the packaging of a market-leading product? Ultimately, all of these questions end up being a matter of impression for a judge to decide and he will make his decision based on his knowledge of life as a general, everyday consumer, obviously allied to certain legal principles; but there’s very rarely any certainty about the way the case is going to go and that brings in concerns about the risk of litigation and the cost of taking on supermarkets.

“It comes down to the judge's discretion and for that reason, many market leading brand owners will be reluctant to take action against a copycat product because they realise it may take them 12-18 months to get the matter resolved. By that time, the product in question may no longer be on the shelves and they may face a hefty legal bill; not only of their own, but they may also be ordered to pay the defendant’s cost – and that’s before you even get in to the commercial issues of taking on a supermarket which may well be your biggest customer.”
Alex Newman - Partner