The rivalry that comes to mind when these supermarkets appear in the same headline is the rivalry of Colin vs Cuthbert, the two caterpillar-shaped cakes. But M&S has since won a case against Aldi for infringement of their registered designs used in their Christmas gin liqueur ranges.
The case was heard by Hacon J, and concerned four registered designs with a priority date of 15 December 2020. In November 2021, Aldi brought out its own line of gin liqueur with an extremely similar shape and stopper, a wintry scene with mostly trees over a large portion of the bottle, a snow effect, and a light-up base. See the Telegraph’s article from the start of the case for both supermarkets’ designs together.
The description for each design contained the phrase “Light Up Gin Bottle”. Hacon J examined whether the description meant that the integrated light at the base of the bottle should consequently be interpreted as a feature of the registration. Although the position for community registered designs is clear (you ignore the description), he was less sure of the correct approach for UK registrations. He raised a concern that, if descriptions are in fact not relevant, a real possibility would exist that a member of the public may read the description to resolve ambiguities, and be misled as to which features form part of the registration.
Degree of freedom
The degree of freedom of the designer was considered by the Judge to be limited only by (i) the need to use gold flakes for the snow effect; (ii) the relative simplicity of printing a design on a straight side of a bottle rather than a curved side; and (iii) the increase in cost where more colours are used. He found that the designer was fairly unlimited in their freedom as to the shape of the bottle, and the nature of the design to be printed onto it.
Aldi sought to argue that a number of features of the designs were solely dictated by technical function. The Judge was not persuaded by any of these, finding that these were all aspects or consequences of aesthetic choices that had been made.
Aldi relied on the use of the phrase “The INFUSIONIST Small Batch” to differentiate from M&S’s designs. The Judge considered Samsung v Applewhich found that the presence of a trademark may hold weight in differentiating a design, depending on the weight an informed user would give to the trademark in question. He found here that there would be an impression made, if only by the word “INFUSIONIST”, as its appearance was clear and conspicuous enough to be a noticeable difference to M&S’s designs.
Disclosures during the grace period
Owners of registered designs in the UK and EU benefit from a grace period, in which they can make their designs public before registering them. Two questions arose in this case. Is the grace period only relevant to validity, or does it also apply to infringement? And does the disclosure in the grace period have to be precisely the design as registered, or could variants also be covered?
Various authorities were considered, and the Judge concluded that the grace period must be relevant in the infringement context. Otherwise, the benefit of the period would be negated when it came to an infringement action. The design would be valid, but so narrowly construed that it would be nearly impossible to prove infringement. This, the Judge decided, could not be right.
On the second question, if the grace period only applied to disclosures of the precise design that was subsequently registered, it would mean that party would be obliged to apply to register every iteration, including all the failures, in order to be protected. The answer had to be, the Judge said, that a disclosure by a proprietor of any design at all in the grace period does not count as a prior disclosure.
The Judge summarised that the task of the court is not to identify the closest prior art and then to decide whether the accused design is closer to that prior art or closer to the registered design. That is particularly the case where, as here, the closest prior art is among hundreds of members of the design corpus. The design corpus as a whole is relevant, not because of a rule of law, but because that’s how human observation works; there is a continuous spectrum of possibilities, but the more strikingly different the registered design is from the design corpus generally, and the fewer in the corpus that are close to it in appearance, the more likely it is that an accused design with something of the registered design’s unusual features will produce the same overall impression.
The Judge focused on five features that the informed user would note as being in common between the M&S registered designs (or at least one of them) and the Aldi bottle. First, the identical shapes of the two bottles (although it was decided that the bottle shape itself was not new). Second, the identical shapes of the two stoppers. Third, the wintry scene over most of the straight part of the bottle, primarily or entirely consisting of tree silhouettes. Fourth, a snow effect, and fifth, an integrated light.
Aldi pointed out differences, including its inclusion of non-white colours, and the fact that M&S’s design contained a stag and a doe as well as trees, whilst Aldi’s design solely featured trees. It argued that its INFUSIONIST branding differentiated it further. Aldi argued that its branding on one part of the bottle dictated a clear forward facing position in which it would be placed, unlike M&S’s design, which did not have a clear “front” to it. It also pointed to its “watch strap label” which was not present in M&S’s designs. Its stoppers were a darker cork, and its wintry scene was “brighter and busier”.
However, the Judge considered the overall impression of the Aldi bottles and the registered designs, and decided that they did not differ – the differences were of relatively minor detail.
Aldi has confirmed that it will appeal the decision. It will be interesting to see how this case fares on appeal, if Aldi follows through with it. The Judge conflated the registered designs and conducted an assessment of the four together, and took a very broad brush approach to the assessment. This is an approach that many design owners (and their lawyers) have been keen for the courts to do for many years, but the courts have not frequently done so. If this decision stands, either through lack of appeal or an unsuccessful one, then this is good news for design owners, as it suggests a more generous approach to the infringement analysis than we have seen in the past.
  EWCA Civ 1339
About the author(s)
John Coldham is UK Head of Brands and Designs, and co-heads the global practice. The Team is MIP Designs Firm of the Year 2021, having also won the award in 2019 and 2020. It is the first firm ever to win the award three years in a row.