What’s all this about Gin? – Marks and Spencer PLC v Aldi Stores Limited

For those that want to access the judgment transcript and read Hacon J’s words direct, the neutral citation for the case is [2023] EWHC 178 (IPEC). At the time of writing, the judgment is not available on BAILII but we trust that it shall be soon. The relevant bottles can be seen below (M&S à Aldi):

Images from the official judgment of the court have been used, M&S on the left and Aldi on the right.

To understand the context of the dispute, a few words must be said about registered designs. The basis of M&S’ case was that they had several registered designs of gin bottles with gold flakes suspended in the liquid and with a suitably-Christmas themed outline stencilled into the walls of the bottle itself. They even included an LED light in the base of the bottle, to illuminate the stencil. M&S’ argument was that Aldi, in their sale of their own gin bottles, they had infringed said registered designs.

Registered designs are regulated under The Registered Designs Act 1949, as amended, and, being EU-derived legislation, is interpreted in line with the jurisprudence of the EU courts as well as that of the UK courts. Relevant to this case, a registered design is infringed where another design does not produce on the informed user a different overall impression from that of the registered design. In order to make this decision, the court followed the test as set out in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat):

• 1. Determine the sector the products which incorporate the designs belong to;
• 2. Identify the informed user, then decide their degree of awareness of the prior art and their level of attention in comparing the designs;
• 3. Decide the designer’s degree of freedom in developing the registered design; and
• 4. Compare the registered design and the other design, taking into account the above three factors, as well as the overall impression created by the designs.

Moreover, features dictated by technical considerations should be ignored and different degrees of importance may attach to similarities or differences.

In terms of the sector, Hacon J found Aldi’s case more convincing, being spirits and liqueurs in the UK. For the informed user, it was determined this would be a member of the UK public who purchases and consumes spirits and liqueurs, and has a relatively high degree of attention.

The level of degree of freedom is discussed in paragraphs [32] to [42]. In essence, Hacon J determined there was considerable freedom for the designer, especially in regard to the shape of the bottle and the design to be printed on it. Although there were practical considerations, such as the placement of the light, the decision as to the type of light had to be made first. Furthermore, there were no features dictated by technical function, all being “aspects or consequences of aesthetic choices”.

Following the determinations of the previous facts, Hacon J moved on to an assessment of the impression created in the mind of the informed user. One of the similar features identified between the two designs were the identical shapes of the bottles. This was of particular importance, due to the lack of a similar shape in previous design iterations either on sale or advertised by M&S or Aldi (otherwise referred to as the “design corpus”, or prior art). Effectively, the unusual shape adds weight to the argument that any similar design would not create an overall different impression (the bellwether of proving infringement).

Other similar elements included the identical shape of the bottles’ stoppers, the winter scene encompassing tree silhouettes, a snow effect and an integrated light. In Hacon J’s view, each of the similarities would appear significant to the informed user, and the cumulative effect would be “striking”.

Aldi, however, relied upon several differences in the two bottles. Namely, the winter scene on their bottle differed from that of the M&S scene, the Aldi bottle had additional branding, both of the previous aspects created a distinct “front” to Aldi’s bottle, the Aldi stoppers had a watch strap label with the Aldi logo, and the Aldi stoppers were darker in shade. Referring back to the need for the contested design to create a different overall impression, Hacon J found that the differences were minor, which did not affect the lack of difference created by the similarities of the designs. Therefore, importantly for M&S, Aldi’s bottles were found to have infringed upon M&S’ registered designs.

Comment

The clear breakdown and application of the law to the facts by Hacon J is a helpful example of well-thought out and clear case law. For practitioners advising clients as to the merits of enforcement and risks of infringement, reference to this case will be invaluable. For clients themselves, the decision is a reminder that minor changes to a registered design will not protect them from infringement actions and adverse decisions. Where a registered design can be considered as substantially apart from the design corpus, the overall impression it leaves will be harder for another design to differentiate from.

For those using registered designs as inspiration (or companies looking to exploit an untapped market), it is important they conduct due diligence on current designs and their significant features. Although the court will take its own approach, if and when an action comes before it, IP professionals will be able to advise as to the risk of advertising and selling products which incorporate new designs, in respect of existing registered designs. This may save a lot of money later down the line, and avoid the commercial and reputational embarrassment of being found to have infringed another entity’s registered design.