Marks & Spencer (M&S) and Aldi were at loggerheads again over an alleged IP infringement. Having already publicly contested their dual production of caterpillar cakes, their latest dispute concerned festively decorated gin bottles. 

In this instance, the Court of Appeal confirmed that Aldi had infringed M&S’ registered designs for gin bottles.

Background

The dispute began in 2021 when M&S brought an action against Aldi for infringement of their four registered designs for festive bottles with gold “snow” flakes and a light in the base of the bottle.

The respective designs are shown below:

In 2023 the High Court found that Aldi had infringed M&S’ registered designs as their gin bottles did not create a different overall impression on the informed user. The similarities between the designs were found to be “striking”.

Whilst Aldi appealed the decision, the Court of Appeal upheld the decision of the High Court and dismissed the appeal.

The Court of Appeal Judgement

In agreeing with the decision of the High Court, the Court of Appeal endorsed the following key points:

• Of a design and in assisting the interpretation of a design.
• Where there is a valid priority date, if conducting a comparison of overall impressions, it is to be done at the date of priority.
• If there is a valid priority date, the 12-month grace period will extend back from the date of priority.
• Disclosures of the registered design (as well as those producing the same overall impression) during the grace period should be excluded when assessing infringement and validity. To do otherwise would result in the purpose of the grace period being “substantially defeated”.

Key Take Aways

Whilst this judgement does not necessarily introduce new points of law, it provided guidance on design infringement claims that can assist in developing broader IP protection strategies.

Designers should be reminded that their own previous designs can be used when assessing whether a new design creates a different overall impression on an informed user. To benefit from the protection provided by the grace period, previous designs should not create a different overall impression on the informed user.

Considering design infringement claims do not often go before the Court of Appeal, this case confirms that registered designs are a valuable and cost-effective resource to protect the appearance of a product and, therefore, stop sale of look-alike products.

Helen J. Phizackerley also contributed to this article.