In a recent decision, the Court of Appeal has upheld the Intellectual Property Enterprise Court’s (“IPEC”) earlier decision that Aldi infringed registered designs owned by M&S, dismissing Aldi’s appeal in its entirety.

Marks & Spencer PLC v Aldi Stores Limited [2024] EWCA Civ 178

Background

The registered designs relied on by M&S (see Designs 1-4 above) consist of decorated gin bottles, designed to imitate snow globes through the use of gold flakes which become suspended when the bottles are shaken, together with LEDs attached to the base of the bottles.  Gin-based flavoured liqueurs sold in these bottles were introduced by M&S in autumn 2020.

In November 2021, Aldi launched  its own range of gin-based flavoured liqueurs, sold in similarly decorated bottles, also containing gold flakes which become suspended when the bottles are shaken, and LEDs attached to the base of the bottles.
 

Interpretation of the Registered Designs

The earlier IPEC decision held that Designs 3 and 4 represented the gin bottles in front of a darker background, which assisted in demonstrating the illumination of the bottle, originating from the LED attached to the base. One of the grounds of appeal raised by Aldi was that the Judge erred in his interpretation of the registered designs, and that the correct interpretation of Designs 3 and 4 is that the bottles themselves and/or the liquid contained therein, is dark coloured.

The Court of Appeal dismissed this ground, and held that the clear glass shown at the top of the bottle near the stopper, the neck of the bottle, and the punt, clearly shows that neither the bottle, nor the liquid, is of a dark colour.

The earlier IPEC decision also held that Designs 1 and 2 do not show a light, although no reasons for this finding had been given.  M&S therefore argued that the Court of Appeal should also reconsider this finding.

The Court of Appeal held that it was “tolerably clear” that the images of these designs do show the inclusion of a light, particularly in the case of Design 2. The illuminated flakes, the golden shimmer at the neck of the bottle and the golden colour of the scenery on the reverse of the bottle (which was off-white on the front) were all deemed to support this conclusion.  Moreover, the finding was further reinforced by the inclusion by M&S of “Light Up Gin Bottle” under the heading “Description” (since amended to “Indication of Product” by the UKIPO) on the registrations. Whilst the earlier decision did not reach a conclusion as to whether this might be relied upon to resolve any ambiguity, the Court of Appeal held that whilst the “Indication of Product” could not be relied upon to define the scope of the registered design, it could be relied upon to clarify what the image represents, and so be used to assist in interpreting the design. In M&S’ case, the “Indication of Product” clearly and unambiguously established that the registered designs featured an LED attached to the base of the bottle.

In light of these conclusions, the Judge focussed the remainder of the appeal on Designs 1 and 2, on the basis that including Designs 3 and 4 did not have any determinative effect on the case.
 

Design Infringement

Grace Period

Among Aldi’s other grounds of appeal was the effect of the grace period. Aldi submitted that all disclosures made by M&S during the grace period (the one-year period preceding the filing date of the registered design) should be considered when assessing infringement, and that the IPEC judge had erred in his interpretation that the designer’s own disclosures within the grace period could be disregarded for the purposes of assessing both the validity and infringement of the designs.

The Court of Appeal held that the purpose of the grace period would be somewhat defeated if the designer’s own disclosures during the grace period were relevant in assessing design infringement. The Court of Appeal further clarified a previously ambiguous point that disclosures by the designer during the grace period of a design which produces the same overall impression on the informed user, should be disregarded when assessing infringement, in addition to validity. However, this should not extend to all disclosures made by the designer, and so where a designer test markets a number of designs, but goes on to register only one, the designer should be mindful of the risk that these other designs may in some cases reduce the scope of protection of the registered design.

Same Overall Impression?

The test for registered design infringement is whether the respective designs produce different overall impressions on the informed user. So, in the present case, in order to succeed, M&S needed to establish that the designs adopted by Aldi would create the same overall impression on the informed user, as its registered designs. The assessment is made having regard to the sector in question, the degree of the designer’s freedom, and the overall impressions produced by the respective designs on the informed user (who will have in mind any designs previously made available). The earlier decision established that the relevant sector was spirits and liqueurs in the UK, and the informed user was a UK purchaser and consumer of spirits and liqueurs. It was held that there was significant design freedom, and that none of the features were excluded from protection on the basis that they were dictated solely by technical function. The relevance of the branding added by Aldi was considered, and it was held that the word “INFUSIONIST” would make an impression on the informed user, though the words “The” and “Small Batch” wouldn’t have any significant impact on the overall impression.

Having regard to these considerations, the IPEC judge identified a number of similarities between the designs. In particular, both bottles are identical shapes, and appear to have identically shaped bottle stoppers. Both bottles incorporate a snow effect and have an integrated light, and feature decoration consisting of a wintry scene, incorporating tree silhouettes.  A number of differences were also identified, such as the “Infusionist” branding present on Aldi’s bottles and the watch strap label with the Aldi logo on the top, among other features, though the IPEC judge nevertheless held that the designs of Aldi’s products do not produce a different overall impression on the informed user to the registered designs owned by M&S, and so infringement was established.

In the present case, Aldi submitted that the IPEC judge had not properly considered the snow effect and the integrated light in its comparison with the registered designs, which did not include those features, and that unjustified weight was given to the shape of the bottles (which was itself protected by a third-party registered design) and stoppers, which formed part of the design corpus. The Court of Appeal dismissed these arguments. Initially, it was noted that Designs 1 and 2 had been held to include a light, and so that point must fall away. Secondly, it was held that the weight given to the shape of the bottles and stopper was a matter for the IPEC judge as part of his overall assessment, and his conclusions on these points, including his assessment on their relevance in the comparison of the overall impressions of the Aldi products with those of the registered designs, were ones that he was entitled to reach.  The Court of Appeal therefore dismissed Aldi’s appeal in its entirety, and upheld the decision that Aldi had infringed M&S’ registered designs.
 

In Conclusion

Cases involving look-alikes are not always easy wins for brand owners, as seen in the recent Thatchers v Aldi case.  In that case, it was held that Aldi had not infringed Thatcher’s trade mark rights, and that there had been no passing off, on the basis that there was no likelihood of confusion between Thatcher’s and Aldi’s cider cans.  Discount supermarkets are increasingly choosing to “live dangerously”, and market products which strikingly resemble their branded counter-parts, but feature other elements of branding, including a different name, making it more difficult for brand owners to establish a likelihood of confusion under trade mark law. It is difficult to say what the outcome of this decision might have been had M&S instead been relying on trade mark infringement and/or passing off, though the value of registered design protection can clearly be seen, and should serve as reminder to brand owners of the importance of considering designs (as well as trade marks) when devising a brand protection strategy.