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In the recent case of Marks and Spencer PLC v Aldi Stores Limited  EWHC 178 (IPEC) (the latest instalment of disputes between the two supermarkets), the IPEC ruled that Aldi had infringed M&S’ registered design rights in respect of the bottle used for their line of festive gin-liqueurs (pictured below).
After this litigious duo rose to IP law fame following the Colin the Caterpillar case (now settled), M&S and Aldi have been back in court again, but this time concerning light-up novelty gin bottles (and registered design rights rather than trade marks/passing off).
In late 2020, M&S launched a line of festive gin-liqueurs packaged in a light-up bottle containing shimmery gold flakes (think alcoholic, glittery, snow globe) (the “M&S Bottle”). The design of the M&S Bottle is protected by a number of UK registered designs dated 29 April 2021 (albeit each registration claims an unchallenged priority date of 15 December 2020) (the “M&S Registered Designs”).
The following Christmas (2021), Aldi released a very similar bottle as part of their ‘The Infusionist’ range.
One of M&S’s registered designs relied on: 6134278
M&S alleged that the advertising and sale of Aldi’s product infringed certain of the M&S Registered Designs.
It’s interesting to note that in this instance, no counterclaim was brought by Aldi seeking a declaration of invalidity in respect of any of the M&S Registered Designs. Aldi did however seek to argue that multiple features of the M&S Designs were solely dictated by technical function (and thus not eligible for registered design protection), namely: (1) the distribution of gold flakes throughout the liquid, (2) the use of gold flakes, (3) leaving the upper, curved portion of the bottle clear of markings, and (4) the integrated light source at the base of the bottle. The judge in this instance disagreed finding that such features were all “aspects or consequences of aesthetic choices made by the designer” (and so it may be that a claim for invalidity would have similarly failed).
The IPEC found in favour of M&S with His Honour Judge Hacon ruling that, with the design corpus in mind, the similarities between M&S’ and Aldi’s products were ‘striking’. In particular he noted the following similarities:
The identical shape of the bottles (when measured against the design corpus as a whole);
The identical shape of the stoppers;
The ‘wintery scene’ or tree silhouettes applied to the sides of the bottles;
The ‘snow effect’ produced by the use of the gold flakes (in respect of M&S’ registered designs UK 80 and 84); and
The use of an integrated light (in respect of M&S’ registered designs UK 82 and 84).
The Judge noted that there were differences between the two supermarkets’ products (such as Aldi’s use of the ‘Infusionist’ branding), but concluded that such differences were relatively minor and thus did not detract from the overall impression of the two bottles being similar. Aldi’s bottle design therefore fell foul of the statutory test and was found by the Judge to infringe the relevant M&S Registered Designs.
While it appears as though Aldi are seeking to appeal the above decision, it is important to consider the possible implications of this ruling on other Aldi lookalike products. From drinks and chocolate to beauty products, Aldi are renowned for their affordable lookalikes of famous brands. Whether this judgment will lead to a decrease in the creation of such products in the future or perhaps a rethink of wider brand strategy remains to be seen.
This case also serves as an important reminder to brand owners of the benefits of registering packaging designs as either registered designs or trade marks to ensure greater protections from copycats as well as providing reassurance to those with such registered rights in place.
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