The be-gin-ning of the end? Aldi found to infringe M&S' designs for festive liqueur bottles

Casting our minds back to the festive period of 2021, news that Marks & Spencer had launched legal proceedings against Aldi for copying its products – at that time, its decorative gin liqueur bottles – was a hot topic in the general media. 

Just over a year later (a decent timeframe for the first stage of intellectual property infringement proceedings), Judge Hacon sitting in the Intellectual Property Enterprise Court has held that Aldi has indeed infringed Marks & Spencer's registered design rights. 

At the time of writing, the decision remains subject to appeal by Aldi, so this may not be the final word on the matter. A big question remains whether this success for Marks & Spencer means retailers of 'copycat' products will have to change their ways and pay more attention when borrowing "design cues" from their competitors.

Background

Marks & Spencer ("M&S") introduced its new line of Christmas gin-based liqueurs in 2020. These are festively decorated, have an LED light at the base of the bottle and the liqueur contains gold flakes which become suspended and illuminated when the bottle is shaken. 

The following April, M&S achieved registration of five UK designs protecting the appearance of these festive bottles ("Registered Designs"). 

Under design law in the UK, a design can be registered if it is new and has individual character. If registration is achieved, this confers upon the owner a monopoly for up to 25 years, allowing them to make and sell goods incorporating the protected design. The Registered Designs also gave M&S the right to prevent any third parties from making/selling/importing/stocking articles that do not produce a "different overall impression" than the Registered Designs on the "informed user". 

Aldi started selling gin liqueurs with gold flakes in a light-up, festively-decorated bottle in November 2021. M&S issued proceedings, arguing that Aldi's products infringed its Registered Designs.

Trial

The preliminary tasks for the judge were: to identify the sector to which the products belong and the "informed user" from whose perspective the assessment is made; to determine what awareness an "informed user" would have of pre-existing designs, and the level of attention they would pay to the design's features; and to ascertain how much freedom is available to the designer in developing the designs. 

In this dispute, Judge Hacon found the informed user would be a consumer who purchases and consumes spirits and liqueurs. 

As to the design freedom, M&S mentioned that the designers chose to pursue this particular design from a vast range of bottle shapes. The judge found that the designer would have had considerable freedom in relation to the shape of the bottle and the artwork that was to be printed on it. 

Aldi attempted to narrow the protection conferred by the Registered Designs by arguing that several features were dictated solely by their technical function – for example: the use and distribution of gold flakes, leaving the upper part of the bottle clear of markings and putting the integrated light at the base of the bottle. The judge however found, to the contrary, that such features are consequences of aesthetic choices made by the designer and therefore did not solely have a technical function.

The judge then moved on to comparing the designs which have been registered, and the alleged infringements, taking into account the findings on the above questions, and determining the overall impressions produced by the designs on the informed user. The informed user may discriminate between elements of the designs, attaching different degrees of importance to similarities or differences. 

Hoping to defend its position, Aldi emphasised the differences between its liqueur bottles and the Registered Designs, some of which were: 

• The winter scene in the Registered Designs is in white and features a stag and a doe, while Aldi's bottles feature colour along with white, and uses trees only
• The Aldi bottles had 'INFUSIONIST' markings where the Registered Designs had no branding
• Because of the above, the Aldi bottle has a "front" while the Registered Designs have none
• The Aldi winter scene is brighter and busier than the scenes present in the Registered Designs
• The Aldi stoppers have a watch strap label with Aldi's logo on top while the Registered Designs do not have any
• The stoppers used by Aldi are darker in shade than the ones present in the Registered Designs.

While Judge Hacon agreed the above differences existed, they were minor and were overwhelmed by the similarities: 

1. Aldi's bottles have an identical shape as the Registered Designs
2. Aldi's bottles have an identical stopper as the Registered Designs
3. Aldi's bottles contain a winter scene over the entire portion of the side, which consists of tree silhouettes, a snow effect and an integrated light.

Therefore, it was held that Aldi's bottles produced on the informed user the same overall impression as the Registered Designs. 

Comments

Given the importance of 'imitator' products to Aldi's product portfolio, it would not be surprising if Aldi files to appeal this decision. Overall, it seems unlikely that this is decision will bring a substantial change to Aldi's operations in this space as, in the UK, right-owners do not always succeed in challenging potential 'copies' in the courts. 

This may, in part, depend on the type of rights being relied on to challenge the competitor products. For example, back in 2014, Aldi defended an allegation of passing off brought by Moroccanoil Israel Limited in respect of its look-a-like "Miracle Oil" product, on the basis that there was no misrepresentation on the part of Aldi as to the source of the goods. Furthermore, Aldi's various battles with rights-holders globally have not necessarily been decided consistently between jurisdictions – meaning they may simply be able to divert products to other stores if prevented from selling in specific countries. 

Manufacturers and retailers may, however, give more consideration to registering their product designs. Although getting the representations 'right' can be difficult, it is a relatively inexpensive form of protection (particularly in the UK) and means that right-owners do not need to prove copying on the part of the potential infringer.

If you would like to learn more about how you can register and enforce your design please get in touch with any member of our Intellectual Property team.