Ginfringement: Success for M&S in the Court of Appeal in registered design spat with Aldi

M&S and Aldi's gin bottle battle over design rights has reached a conclusion (for now) as the Court of Appeal has unanimously upheld the IPEC's decision that Aldi's bottle infringed M&S' design.

The decision will provide comfort to product owners and may cause concern to discount retailers that sell lookalike products. We previously set out a detailed background to the dispute and first instance decision in our recent article (here), but, in short:

1. Autumn 2020: M&S registered four designs for a 'snow globe' range of gin.
2. November 2021: Aldi began distributing a bottle that shared several similar features, namely: (i) the shape and contour of M&S's bottle and cork stopper; (ii) the illumination of the bottle; (iii) the gold leaf flakes; and (iv) the bottle's winter forest silhouette design.
3. December 2021: M&S brought an action in the IPEC for infringement of its registered designs.
4. February 2023: HHJ Hacon found at first instance that Aldi had infringed Aldi's registered designs.
5. January 2024: In a trial before the Court of Appeal, Aldi submitted that the first instance judge had reached the wrong decision on the basis of seven grounds.

The grounds of appeal

Given that the grounds on which the Court of Appeal rejected the appeal are technical, a few key points of design law are worth keeping in mind when considering the court's reasoning:

• Grace period: A 12-month period after a designer has first disclosed a design to the public in which they may apply to register the design.
• Priority date: The date of a foreign application filing to which a subsequent UK filing within 6 months for the same design can be backdated.
• Design corpus: A body of designs for similar products that existed at the date of creation of a registered design which will affect the overall impression a design has on the informed user.

In simple terms, the Court of Appeal's responses to the various points of appeal were as follows:

Ground 1: Should disclosures of a design during the grace period be considered when assessing infringement?

No. The purpose of the grace period is to enable designers to test their designs on the market before undertaking the time and expense of obtaining registered designs. It would undermine the purpose of the grace period if disclosing a design during this time would weaken subsequent infringement claims by owners of the same design.

In any event, only one overall impression can be created on the informed user with respect to both validity and infringement.

Ground 2: Should disclosures of different designs during the grace period be considered when assessing infringement?

Designers should be protected with respect to both validity and infringement where they have disclosed different iterations of a design during the grace period that do not create a different overall impression, as was the case here. However, regard may be paid to designs disclosed during the grace period that create a different overall impression to the registered design.

Ground 3: Was it procedurally unfair for the judge to assess infringement at the priority date when it was common ground between the parties that assessment was at the filing date (particularly where the judge did not raise this issue at trial)? 

No. Whilst ideally the judge would have raised at trial his intention to assess infringement at the priority date, no argument was raised at appeal that the evidence or arguments at trial were different as a result of assessment at the priority date, meaning Aldi was not prejudiced by the decision. 

Ground 4: Was the judge wrong at law to assess infringement at the priority date on the basis that it would be it illogical to assess the overall impression at a point where there could have been no infringement?

No. The priority date, like the grace period, is relevant to both validity and infringement, and it is logical that the date at which an overall impression of a design is created on the informed user might predate the date from which it can be infringed.

Ground 5: If one of appeal grounds 1 to 4 succeeded, would the design corpus have been different such that the overall impression of the design would have been different?

No. The only design that might have been included if grounds 1 to 4 had succeeded was less similar to the registered designs than a design already included in the design corpus. The inclusion of the additional design would therefore have had no effect on the overall impression of the registered designs on the informed user.

Ground 6 (and M&S' respondent's notice): (Aldi's ground) Did the judge provide adequate reasons for concluding two designs were images created against a dark background (rather than that the bottles, or the liquid they contained, were themselves dark)? (M&S' ground) What about for the two designs that were found not to incorporate a light? In either case, if not, had the judge reached the correct decision?

The Court of Appeal accepted that it should reconsider both findings due to the lack of reasons provided in the first instance decision. In its consideration, the Court of Appeal set out several pertinent principles:

• Designs must be interpreted objectively; the intention of the designer is not relevant.
• Where the designs are photos, the design claim consists of the visible features of the product.
• Where registrations are distinct (M&S registered four designs for the same product), each cannot be interpreted by reference to the others.
• Contrary to the finding of the first instance judge, a product manufactured to the design can be relevant to the interpretation of the design in so far as to "confirm conclusions already drawn", so long as the product does not differ from the design. Here, the Court of Appeal considered a sample of M&S' gin bottle.
• The 'indication of product' section of the application can be used to resolve ambiguities regarding the design. Here, "light up gin bottle" appeared under the heading 'indication of product', which could be used to resolve ambiguity as to whether the design incorporated a light.

The Court of Appeal also agreed that two of M&S' registered designs did feature a dark background (rather than a dark bottle or dark liquid) as clear glass was visible in the photo, and there was no gap between the dark colouring and the stopper that you would expect to see if the image depicted a dark liquid.

The Court of Appeal overturned the finding that two of M&S' registered designs did not incorporate a light as various visible features in the photos indicated the presence of a light: gold flakes in the bottle were illuminated; there was a golden shimmer to the neck of the bottle; and although the scene depicted on the outside of the bottle appeared continuous, the colouring differed on either side of the bottle.

Ground 7: Did the judge err in principle or law in finding Aldi's product created the same overall impression as the registered designs?

This ground consisted of two objections:

1. Did the judge consider the impact of the lack of 'snow' and integrated lights in some registered designs on the comparison?

   The Court of Appeal overturned the finding that any of M&S' bottles did not include light features so this element fell away. For registered designs including photographs in which the 'snow' had settled to the bottom of the bottle, the proper comparison was to Aldi's bottle in an equivalent state, which the judge had done, albeit implicitly.

    

2. Did the judge attach undue weight to the shape of the bottle and stopper in the registered designs, where (i) the shape of the bottle was a registered third party design; and (ii) other designs in the corpus featured similar stoppers?

No. The stoppers and shape of the bottle were part of the corpus and taken into account by the judge in his finding such that the judge had not erred in principle. It was irrelevant that the bottle was a registered third party design apart from the fact that the design therefore formed part of the design corpus which, as mentioned, the judge took into account.

Key takeaways

Although the Court of Appeal ultimately largely affirmed the IPEC decision, the judgment provides helpful points for product owners to consider when developing their strategies for IP protection and useful technical guidance on the operation of registered design law. Key takeaways are as follows:

• There have been a series of judgments in which major brand product owners have struggled to protect against lookalikes because trade mark infringement and passing off have been too difficult to prove. This case raises the possibility of a new avenue to explore using registered design protection.

• Photos which clearly set out the features of a design can be an effective tool in infringement claims. It is important that photos are comprehensive as they will be considered objectively, without reference to the intention of the designer. Consider including multiple photos with an application as these will be assessed collectively.
• The overall impression created by multiple registrations for the same product will not be assessed by a court by reference to one another - each should be capable of standing on its own.
• The 'indication of product' field of an application should contain a description of the features of a design, as a court may consider this when interpreting a design.
• Products manufactured to a design may be considered by a court to confirm conclusions already drawn regarding features of the design, provided the products correspond to the design.
• Applicants for registered designs may continue to make use of the grace period without fear that this may damage their defence to infringement claims. Protection will extend to similar designs disclosed in this period provided they do not create a different overall impression on the informed user.
• Where a registrant has backdated registration of a design to the priority date, the overall impression of a design will be assessed at the date from which the design claims priority.

If the topics discussed in this article are relevant to issues that you or your business face, you may also be interested in our recently published designs text "Designs Law and Practice" (Third Edition, LexisNexis).