Get-up infringement decision sticks in Aldi's throat

Denmark

In MalacoLeaf AB v Aldi (Case HR 72/2003), the Maritime and Commercial Court of Copenhagen has issued an order prohibiting the sale of the defendant's HUSTOL-marked throat candy in Denmark. It ruled that the get-up used by the defendant was confusingly similar to that used by the plaintiff for its pastilles sold under the mark LÄKEROL.

MalacoLeaf AB, a Scandinavian confectionary firm, produces a type of throat pastille sold under the well-known and registered trademark LÄKEROL. The pastilles have two varieties; the original flavour is sold in a green box and the extra strong version is sold in a red box. Aldi, a German company that operates an international chain of supermarkets, sold LÄKEROL-marked pastilles for a number of years. However, Aldi stopped selling MalacoLeaf's products following its refusal to produce 'private label' (ie, own brand) pastilles for Aldi.

Some time later, Aldi started to sell a similar candy product under the trademark HUSTOL. Aldi's product was also available in two varieties; an original flavour in a green box and a stronger version in a red box. MalacoLeaf brought a trademark infringement claim against Aldi, arguing that the get-up of the HUSTOL-marked product was confusingly similar to that used for its LÄKEROL-marked pastilles.

The Maritime and Commercial Court of Copenhagen upheld the claim and issued an order prohibiting the sale of Aldi's product in Denmark. It noted that over the years, MalacoLeaf has built up trademark rights in the type of get-up used for its green and red boxes. It held that the get-up used for Aldi's boxes was confusingly similar to MalacoLeaf's, particularly in terms of the combination of colours and typeface used, as well as the positioning of the text on the packaging. The court held that although Aldi owns an international registration for the get-up of its HUSTOL-marked product, its use in Denmark, with full knowledge of MalacoLeaf's similar get-up, was in contravention of the Trademark Act and Marketing Practices Act.

However, MalacoLeaf was unable to provide evidence of the exact amount of damage it had suffered and the court ordered a fairly low award totalling Dkr60,000.

Aldi has appealed, but in an unusual twist, MalacoLeaf has submitted new evidence to the Supreme Court in the form of a television documentary, highlighting that throughout the dispute, Aldi has been deliberately acting in bad faith.

The Supreme Court is expected to issue its judgment next year.

Christian Levin Nielsen, Zacco Advocater, Copenhagen

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