Aldi’s Gin Lights the Legal Spark in Marks & Spencer’s Heart

You may recall the legal storm that ensued last year between major supermarket chains M&S and Aldi regarding Aldi’s alleged infringement of M&S’s IP rights in their ‘Colin the Caterpillar’ cake. M&S’s relationship with Aldi has not become more cordial since despite multiple humorous attempts from Aldi’s excellent PR Team. M&S was not keen to share the festive spirit with Aldi and they have once again taken legal action against their competitor in the High Court, this time in relation to an alleged infringement of their flagship Light-Up Festive Gin bottles.

The Proceedings

The claim against Aldi was brought by M&S in December 2021. Both Aldi and M&S have recently had the opportunity to make their arguments at a hearing before Judge Hacon on
9 December 2022.

M&S argued that Aldi’s 2021 gold flake blackberry and clementine gin liqueurs are ‘strikingly similar’ to their 2020 ‘very Instagrammable’ Light-Up Festive Gin bottles for which they hold a registered design. Whilst Aldi argued that the designs used are ‘commonplace’ and ‘widely known across the market’, M&S claimed that the Aldi design gave shoppers ‘the same overall impression’ as their protected design.

M&S’s legal team claimed that both bottles ‘have the same integrated light feature at the base of the bottle’, and they both have a ‘winter forest silhouette graphic design’.
The similarities, as submitted by M&S, do not stop there, and also include the use of gold leaf flakes and the fact that both bottles are of similar shape and contour and both are sealed with cork stoppers.

M&S further argued that the inclusion of a light feature in their gin bottles was ‘a strikingly novel design choice’ of theirs introduced in 2020. The inspiration was, according to M&S, its own product developer who came up with the idea of incorporating lights into the base of the bottle after seeing lights in shops on London’s Kensington High Street.
M&S stated that their festive gin was ‘intended to be market-leading and a real first for consumers’, inviting their interaction.

Aldi’s representatives have made various arguments in their defence, namely that M&S’s designs ‘do not show… an integrated light source as claimed’, but rather that pictures ‘show light coming from underneath the bottles, suggesting the light source in the images is external to the designs themselves’.

They further argued that the ‘light feature and the inclusion of gold flakes were widely known across the sector’ by the time M&S’s designs were registered in April 2021.
Aldi have also pointed out that there are clear differences between the two bottles, namely M&S’s bottles ‘contain no branding’, while the Aldi bottles ‘are prominently branded with the words ‘The Infusionist Small Batch’.

The hearing continues and we anticipate more on the matter throughout 2023.

Geldards Comment

The dispute between M&S and Aldi involves design rights held by M&S in relation to their festive gin bottles. M&S owns multiple protected designs of the light up gin bottle of certain
shape which include the key integrated light feature and a number of other features, such as gold leaf flakes and a variety of winter graphics.

Design rights, which comprise unregistered and registered rights, are regulated in the UK under the Copyright Designs and Patents Act 1988 (“CDPA”) and Registered Designs Act 1949 (“RDA”).

A design needs to meet certain criteria before it can be registered un the UK, the main of which is novelty. A design can protect one or more of the following elements of the product: physical shape, configuration (or how different parts of a design are arranged together), decoration or colour and pattern.

The test that the court will apply in this case is whether Aldi’s gin bottle produces a “different overall impression on the informed user” than the M&S gin bottle and therefore, whether Aldi is liable for infringement of M&S’s registered designs. Aldi’s potential counter arguments may include that the M&S designs should not have been registered in April 2021 in the first place as they were commonplace at the time and therefore lacked the necessary quality of novelty.

If M&S are successful, it is likely that they would obtain an injunction against Aldi prohibiting the latter from selling their light up gin, alongside damages/account of profits for design infringement. Another remedy available in this type claims is an order for the delivery up or destruction of the infringing goods.

It remains to be seen what the court will determine in respect of the alleged infringement but we anticipate, based on their approach to date, that Aldi’s PR team will keep their spirits up regardless of the outcome

Can we help?

If you have any queries or concerns related to registered design infringement or infringement of any other intellectual property rights, please contact our Intellectual Property Protection & Disputes team.

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