Written by William Miles | January 30, 2025
The recent decision of the Court of Appeal in Thatchers Cider Company Limited v Aldi Stores Limited is one of a long line of judgments which serve to remind parties that an appeal of an original decision can often prove fruitful.
For context, Aldi originally defeated Thatchers in the Intellectual Property Enterprise Court (“IPEC”). The IPEC found that the activities of Aldi did not amount to passing off and did not infringe the trade mark owned by Thatchers on either of the grounds claimed (being under section 10(2) and section 10(3) of the Trade Marks Act 1994). Seemingly another victory for the copycat retailer, adding to their substantial tally. However, the appeal to the Court of Appeal allowed for a closer examination of the trade mark claims in issue. Indeed, Lord Justice Arnold noted that the Court of Appeal was fortunate to be able to have the same amount of time (2 days) to examine just one element of the claim (section 10(3)) as the IPEC had to examine all three.
Part of the IPEC’s substantial success is that trials are kept short, thereby reducing costs and increasing the frequency of hearings. However, the limitation of this is that some cases might not be given the time they deserve. This seemed to be the case in the Thatchers judgment as the Court of Appeal overturned the IPEC’s finding of trade mark infringement and granted a victory to brand owners everywhere.
Other cases are waiting in the wings which could result in a similar outcome, such as the assessment of works of artistic craftsmanship in the context of copyright claims. WaterRower (UK) Limited v Liking Limited was determined, again in the IPEC, in favour of the copycat however some commentators suggest that an appeal to the Court of Appeal may well result in a different outcome.
As to the practicalities of such an approach, to appeal a High Court decision, you must first obtain permission to appeal. This permission can be sought either from the High Court at the hearing where the decision was made or from the Court of Appeal by filing an appeal notice. If the High Court refuses permission, you can make a further application to the Court of Appeal.
Outside of the court system many IP disputes are decided by the UK Intellectual Property Office (“UKIPO”). This too has an appeal procedure which often bears fruit.
To appeal a decision of the UKIPO, you in fact have two primary routes: appealing to the High Court or to an appointed person (“AP”). Appeals to the AP are far more common, largely because they are less involved and therefore cheaper to run. However, it’s worth bearing in mind that if they fail, there is no further option to appeal.
Alternatively, an appeal to the High Court can go further, and the belief is that the Court might be more willing to overrule the UKIPO than the AP.
In view of the above if you ever receive an adverse decision from a court or tribunal it is worth giving careful consideration to your next steps and, in particular, the opportunity to appeal. If nothing else the mere fact of lodging an appeal can often reignite settlement discussions and perhaps bring some much-needed leverage back to your side of the argument.
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