No retrial of Aldi vs Dunnes trademark infringement case
Aldi still wants to take Supreme Court appeal over contested shelf-edge labelling
Aldi alleged Dunnes was in breach of the Consumer Protection Act 2007 and the European Communities Regulations 2007. Photograph: Alan Betson
However, Aldi says it wants to appeal to the Supreme Court last month’s appeal court decision setting aside a 2015 High Court finding of trademark infringement through the use of shelf-edge labelling.
That was because this labelling had failed to objectively compare one or more of the relevant and verifiable features of the Dunnes’ products with those of Aldi.
Aldi alleged Dunnes was in breach of the Consumer Protection Act 2007 and the European Communities (Misleading and Comparative Advertising) Regulations 2007.
At the heart of the appeal was whether the summer 2013 price advertising campaign by Dunnes, which employed Aldi’s trademarks for identification and comparison purposes, complied with conditions imposed by the regulations when such advertising is carried out.
The appeal court disagreed with the High Court in relation to its finding that the shelf-edge labelling part of the campaign breached the regulations.
The three-judge appeal court, earlier this month, heard both sides on whether there should be a retrial of the case and on the matter of costs.
On Wednesday, the court ruled there should be not retrial because of the period of time that had passed since the issue at the centre of the case occurred.
President of the court, Mr Justice Sean Ryan, said this was also because the price comparison campaign was “long over”, the test applied by the High Court (for establishing infringement) was the one put forward by Aldi and because a rehearing would therefore be “significantly different” from what was before the High Court. No useful purpose would be served by a retrial, he said.
In relation to costs, the judge said the court would allow Aldi 20 per cent as its trademark rights had been vindicated in the appeal court judgment.
However, Aldi would have to pay 80 per cent of the costs as Dunnes was the “principal victor” in the appeal.
John Gleeson SC, for Aldi, asked for a stay on the costs order pending an application to the Supreme Court for leave to appeal the case.
Dermot Gleeson SC, for Dunnes,said there was no warrant for a stay.
Mr Justice Ryan granted a stay on the costs order providing an application for leave to appeal to the Supreme Court was lodged in four weeks. If the Supreme Court allows an appeal to be heard the stay would remain in place until its determination.
In its judgment on the matter, the appeal court said the High Court erred in its application of the rules of comparative advertising in the 2007 regulations
However, the appeal court agreed with the High Court finding that shop-floor advertising banners were not permissible because they did not constitute comparative advertising.