It's Be'gin'ning to Taste Like Christmas: The Aldi v Marks & Spencer Gin Dispute

Earlier this year, global supermarket Aldi sought to appeal a ruling by the Intellectual Property Enterprise Court (IPEC), which found that the gin liqueur marketed by Aldi infringed Marks & Spencer's (M&S) registered design rights.

Mollie Leak, Solicitor in our Commercial Litigation and Dispute Resolution team, explores the key details of the case, highlighting the legal principles surrounding design infringement and the court's reasoning, and outlines the important takeaways for brand owners concerned about design lookalikes.

Key Case Information

In December 2021, M&S took legal action against Aldi, claiming that its "Infusionist" range of gin liqueurs infringed upon M&S's design rights for its "Snow Globe" gin.

The key features in question included:

• The illumination of the bottle
• The contour of the bottle and cork stopper
• The winter forest silhouette design
• The gold leaf flakes inside the bottle

Under Section 7(1) of the Registered Design Act 1949, the owner of a registered design holds exclusive rights to use that design, and any design that creates an impression on the consumer similar to the registered design is considered an infringement. Essentially, if a design does not create a different overall impression from the registered design, it constitutes an infringement.

Assessing Design Infringement

To determine if a design has been infringed, the court assesses the "overall impression" created by the two designs in question. The degree of freedom available to the alleged infringer's designer is one of the factors to be considered, with the court disregarding features that are solely dictated by technical function.

In February 2023, the IPEC ruled that certain gin liqueur products marketed by Aldi did, indeed, infringe four registered designs owned by M&S, two of which incorporated an integrated light at the base of the bottle.

The court found that Aldi's bottle created a similar overall impression to M&S's registered designs, as it shared multiple key features. Aldi argued that its design was dictated by technical requirements, but this was rejected, except for the use of gold flakes, which were deemed necessary to represent "snow."

The IPEC's decision also involved comparing other gin liqueur and spirit bottles in the UK market. Aldi's "Infusionist" bottle was found to share a nearly identical botanic shape to M&S's registered design, and despite having the freedom to design the bottle's shape and the winter-themed elements, Aldi chose to adopt features that infringed M&S's rights.

The IPEC concluded that the overall impression of Aldi's product only needed to be "different," not "clearly different" from M&S's design.

The Appeal

Aldi appealed the IPEC's ruling, but in a decision made earlier this year, the Court of Appeal upheld the original findings. The court agreed that Aldi's product produced the same overall impression on consumers as M&S's registered designs.

Key Takeaways for Design Right Owners

The case highlights several important points for owners of design rights and businesses concerned about lookalike products:

• Objective Interpretation of Designs: Designs must be interpreted objectively. The "overall impression" test remains central in determining infringement.
   
• Protection Against Lookalikes: Registering a design can offer robust protection against lookalikes without the need for complicated trademark infringement or passing off claims.
   
• Indication of Product: When registering a design, it's crucial to ensure the "indication of product" is correctly completed, as it will be considered when interpreting design features.
   
• Distinct Registrations: Each design registration is distinct and should not be interpreted by reference to other designs.
   
• Effective Use of Photos: High-quality photos showing the design features clearly can be a powerful tool in protecting your design. Multiple images should be included with any design registration, as they will be assessed collectively.

Conclusion

This case is an important reminder of the value of registered design rights in protecting brands from copycat products. By understanding how courts interpret design infringement, brand owners can better safeguard their intellectual property.

If you're concerned about protecting your designs, it's worth considering how the principles set out in this case may apply to your own products.

For expert guidance on protecting your intellectual property or pursuing an infringement claim for your design, please contact Mollie Leak and our dedicated Litigation team on 023 8063 9311 or email enquiries@warnergoodman.co.uk. We're here to help you safeguard your assets.