ALDI sued by Mondelez for plagiarism of packaging in its “private label” products

The lawsuit filed against the German supermarket chain ALDI brings to the fore an increasingly frequent debate about the commercial practices of some establishments: the development of strategies to produce private label versions that replicate the best-selling products on the market. The rise of these practices has led to a notable increase in conflicts related to the plagiarism of product packaging and intellectual and industrial property regulations.

Although this practice may seem legitimate within a framework of competition and free market, it can go beyond these limits and affect elements protected by intellectual and industrial property regulations. It is not just a matter of replicating the preparation formula or the list of ingredients, but rather the key lies in the conceptual similarity of the original product through the reproduction of visual elements, such as the design of the packaging, the graphic layout of the typography, or the use of colors, which make up the trade dress or commercial image of the product.

Mondelez's lawsuit for packaging plagiarism

The lawsuit, filed by the multinational company Mondelez on May 27 before the Federal Court of Illinois, is based on the alleged infringement of intellectual and industrial property rights by the packaging of certain ALDI products, which, in its opinion, pose a significant risk of confusion for consumers and constitute an unfair exploitation of its reputation in the market.

Mondelez claims that the designs of Oreo, Teddy Grahams, Belvita, Triscuit, and Tate's Bake Shop cookie packages are being replicated on “private label” products sold by the ALDI supermarket chain, affecting its legitimate rights due to the substantial reproduction of said packaging.

But what rights does Mondelez have over the packaging of its products?

Product packaging may be protected by various industrial property rights, since intellectual property and copyright, by requiring high levels of originality and expression, make it difficult in practice to protect packaging under these regulations. In particular:

• Industrial design: industrial designs protect the external appearance of products, therefore, what is protected are certain ornamental and aesthetic aspects that give a special appearance to an industrial product or handicraft. For example, in the case of Mondelez, it has, among others, the following registered designs on the packaging of its OREO product (e.g., industrial design registration nos. 015074777-0001 and 015074793-0002).

• Trademark: in a market as competitive as the food industry, it is essential to register trademarks that allow products to be identified and recognized in relation to those of competitors. Therefore, trademarks are intended to enable consumers to identify and distinguish products and services on the market under a specific name, design, or sign. Depending on the format of the sign being protected, a trademark may be of the following types:
  1. Word mark: when it consists exclusively of words, letters, or numbers in standard characters, without graphics, layout, or color.
  2. Figurative when the sign is composed of words, letters, or numbers with stylized characters or non-standard layout, with or without graphic elements or color, or consisting exclusively of graphic elements.
  3. Three-dimensional when it protects the shape with volume of a product, its packaging, or another element that has a distinctive spatial configuration.
  4. There are other types of trademarks, such as position, pattern, color, sound, movement, multimedia, and hologram trademarks.

As a point of interest, it is worth noting that Mondelez has registered its iconic OREO cookie not only as a word mark, but also as a three-dimensional and figurative mark, thus protecting the distinctive shape of its product (EU trademark registration no. 008566176). In addition, the company has other registrations to protect the figurative elements of the packaging, such as its traditional cookie package (EU TM registration no. 008747347).

1. Inventions: Although packaging elements are rarely considered inventions, if any of them meet the necessary requirements, they should be protected under patent or utility model protection. A patent is a title that recognizes the right to exclusively exploit the registered invention, preventing other users from manufacturing, selling, or using it without the owner's consent. In this case, it should be a novel technical solution, such as an airtight closure system or packaging with particularly innovative functionality. On the other hand, a utility model protects inventions with a lower level of inventiveness than the above; for example, functional improvements in design (such as a more ergonomic format or the incorporation of an easy-open system).
2. Trade dress: unlike US law, where trade dress is a separate concept, there is no equivalent legal category in Spanish law. Instead, it is recognized in the Unfair Competition Law, particularly in relation to acts of confusion (Art. 6 LCD) and exploitation of another's reputation (Art. 12 LCD).

What legal risks are assumed by imitating the packaging or design of private label products?

The marketing of “private label” products that imitate or visually resemble third-party products already established in the market may entail a series of legal consequences for the distributor. First, it must be analyzed whether such practice constitutes an infringement of the original owner's prior rights, such as industrial design rights, trademark rights, or, where applicable, patent rights or trade dress rights.

Notwithstanding the above, even if there is no direct infringement of industrial property rights, such conduct is subject to defense under the Unfair Competition Law, which acts as a concurrent and complementary mechanism to these rights to punish practices that cause confusion among consumers, take advantage of the reputation of others, or constitute an imitation of products in the same market.

Previous cases of plagiarism lawsuits

In light of the above, it is worth recalling a similar case from years ago involving a dispute between the multinational Kraft Foods (now Mondelez) and the Spanish company Gullón. The controversy was based on the latter's marketing in Spain of its “Morenazos” and “Cookies” biscuits, which reproduced the shape and visual representation, both of the product and the packaging, of Kraft's well-known ‘Oreo’ and “Chips Ahoy!” products. 

The US multinational considered that this strategy constituted an imitation of its products and created obvious confusion among consumers, and therefore filed a lawsuit for infringement of industrial property rights and unfair competition.

With regard to this, the Spanish Supreme Court was unable to conclude that there had been an infringement of Kraft's trademark rights, emphasizing the fact that consumers could adequately identify the commercial origin of the product through its word marks. Therefore, the ruling states:

“The absence of said name on the defendant's packaging, without the introduction of any name that resembles or evokes it, means that the similarity in the other elements of the packaging that constitute the aforementioned three-dimensional trademark is not sufficient to create a connection that would allow for the unfair exploitation of the well-known trademark”.

In line with its previous analysis, the Court also rejected the existence of an act of unfair competition in relation to its products, as it considered that, in the specific case of Cookies biscuits, the necessary elements for this were not present. Thus, the ruling states:

“In our case, for the act of unfair competition to have been carried out by the defendant (...) it would have been necessary to prove that the packaging without the mention of ChipsAhoy!, which is similar to that used by the plaintiff, condensed the reputation or prestige of ChipsAhoy! cookies. And there is no evidence of this. In reality, it is the ChipsAhoy! sign that condenses this reputation or prestige, so its use or the use of another similar sign that would allow it to take advantage of its prestige would justify the assessment of an act of taking advantage of another's reputation”.

In short, in such a competitive commercial environment, intellectual and industrial property regulations are becoming an essential resource for protecting product identity and securing business investment. However, this regime must be balanced with free market principles, as it should not serve as an unjustified barrier to competition. Cases such as the current dispute between Mondelez and ALDI over packaging plagiarism highlight the importance of striking the right balance between these rights. For this reason, we will remain attentive to new information about the case.

How can you protect your company's intellectual and industrial property? You can contact our team of expert lawyers here.

Pablo Pedraza

Lawyer specializing in intellectual and industrial property