Clear as gin: M&S and Aldi take liquor bottle battle to the Court of Appeal

26 January 2024. Published by Rory Graham, Associate and Georgia Davis, Of Counsel

Intellectual property enthusiasts' favourite supermarket adversaries were back at loggerheads this week as M&S and Aldi appear before the Court of Appeal. The pair sought to thrash out a first instance decision handed down in the Intellectual Property Enterprise Court (IPEC) regarding alleged infringement of M&S' registered design rights in a gin bottle.

M&S launched proceedings in December 2021 alleging that Aldi had infringed M&S' registered design rights in the bottles of its 'Snow Globe' range of gin through the distribution of Aldi's 'Infusionist' gin range (Marks and Spencer PLC v Aldi Stores Limited [2023] EWHC 178). M&S' bottle featured an inbuilt light, gold 'snow' flakes, a 'botanics' shape and the silhouette of a wintry scene depicted on its side. The case threw up interesting questions as to whether registered design rights offer a stronger alternative form of protection for the intellectual property in supermarket products than trade mark and passing off protection – which had previously been spotlighted by the settlement of the well-publicised dispute between the two retailers in which M&S alleged that Aldi's Cuthbert the Caterpillar cake infringed the intellectual property in M&S' popular Colin the Caterpillar cake. 

In the present case, M&S alleged that five of its UK registered design rights (the UKRDs) in its 'snow globe' liquor bottle were infringed by Aldi. M&S argued that the UKRDs protected: (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.

The IPEC's decision

Although Judge Hacon found there to be several differences of "relatively minor detail" between Aldi's bottle and the UKRDs (such as the presence of "Infusionist" branding and colouring on the Aldi bottle), he determined that Aldi's bottle infringed the UKRDs because the overall impression it created was not different - the designs shared too many notable features. In reaching this decision, the judge considered the 'corpus' of other bottles in the UK spirit and liquor industry in the 12 months prior to the application date of the UKRDs and noted that the overall impression need only be "different" and not "clearly different".

Despite Aldi's arguments that the design of the bottle was dictated by technical requirements, Judge Hacon noted that M&S' designer had a considerable degree of freedom in designing the bottle. For example, the designer had freedom to decide the shape of the bottle and stopper and the integration of the light feature. Each of these features was considered by the Court to be aesthetic rather than technical, although the Court did accept Aldi's submission that the designer's use of gold flakes was restricted by technical requirements as the only suitable method by which snow could be represented.
Issues before the Court of Appeal

The Court of Appeal is now tasked with determining whether Judge Hacon correctly applied the law across the seven points of appeal raised by Aldi. Aldi's points of appeal are broadly split into two categories of argument: (i) the incorrect application of the relevant date for assessment of infringement, and (ii) the insufficient assessment of various elements of the UKRDs and allegedly infringing products and/or insufficient reasons given for the conclusions reached.

The relevant date for assessment of infringement

Aldi submitted in its appeal that the judge had erred in assessing infringement of the UKRDs as he had used the incorrect "relevant date". Aldi submitted that, while the key test for both infringement and validity was assessment of the overall impression on the informed consumer, the judge should have assessed infringement from the date on which the application to register the designs was submitted, rather than from the priority date. Aldi argue that the priority date only exists so as to exclude certain prior art from the design corpus for the consideration of validity, but only validity. The philosophy of the priority date since its inception in the 1800s was to enable the owner of the design enough time to register their designs in different jurisdictions. Without this period, the earlier registration of a design in one jurisdiction might invalidate the subsequent registration of the design in a different jurisdiction. Lord Justice Lewison summarised Aldi's argument on this point, that "although the legal test may be the same, the background against which the legal test is applied differs or may differ as between validity on one hand and validity on the other". Aldi submitted that if the judge had taken the application date as the relevant date for assessment of infringement, the design corpus would have been different such that no finding of infringement would have been reached. 

Assessment of specific elements of the UKRDs

Aldi submitted that Judge Hacon had not properly assessed the impact of the dark colour of the bottle in two of the UKRDs, or alternatively, had not provided proper reasons for his decision on this point. 

Aldi argued that if an applicant for a registered design chooses to include colour in the image, that colour is part of the design unless it is excluded. On the other hand, M&S argued that the dark colour in the UKRDs was simply the background behind the bottles when the photograph was taken and did not form part of the designs. While the first instance judge did comment on the "dark background" of these UKRDs, Aldi argued that, in context, this was merely a passing comment and he had not properly reasoned or assessed whether the dark colour formed part of the designs.

Aldi also submitted that, in making his comparison of the overall impressions of the UKRDs and the allegedly infringing product, Judge Hacon had not properly considered the impact of the incorporated light feature and gold flakes elements for those designs in which these features were not visible. Similarly, Aldi argued that undue weight had been attached by the judge to the shape of (i) the bottle, in circumstances where the bottle shape was a registered third party design; and (ii) the stopper, given its similarity to a number of other products that made up the design corpus.

Significance of the Court of Appeal's decision

The Court of Appeal's decision will be particularly important as the case represents a threat to the business strategy of discount retailers like Aldi, which have profited for years from selling lookalike products at discount prices. Discount retailers have generally been able to escape liability for trade mark infringement and passing off on the basis that their customers are not likely to be confused as to the origin of the product they are buying - they know that it is the supermarkets' 'own brand' product. However, this "get out of jail free" card is not available to discount retailers in registered design right infringement claims where there is no requirement to show likelihood of customer confusion in order to prove infringement.

If the Court of Appeal upholds the first instance decision, we may see more retailers and product owners seek to register their products through registered design rights, in an attempt to take advantage of these additional protections.

However, it should be noted that M&S' gin bottle has very particular aesthetic elements to its design, such as the shape, integration of a light, and use of gold flakes, which impact the Court's assessment of the degree of freedom of the designer. Designers may struggle to persuade the Court that less distinctive designs are the result of aesthetic rather than technical considerations, and discount retailers are likely to fight tooth and nail to prevent further damaging precedents. For now though, Aldi will be keen to overturn the IPEC decision to prevent the risk of a flood of such design right infringement claims. 

The Court of Appeal's judgment will also provide helpful general guidance to owners of UKRDs and practitioners given that claims for design right infringement seldom reach trial, with parties usually opting for commercial settlement instead.

We will provide a further update once the Court of Appeal has reached its decision, in the meantime, the IPEC judgment can be found here.


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