Marks & Spencer’s Gin Takes The Win

Earlier this year, we updated you on yet another dispute between rival supermarkets, Marks & Spencer and Aldi, regarding a potential registered design infringement of M&S’ festive light-up gin bottles. On 31 January of this year, Judge Richard Hacon handed down his judgment in favour of M&S and found that Aldi had, in fact, infringed their registered design rights.

The Decision

The key question was whether Aldi’s gin bottles “produce a different overall impression” and the court held “they do not because of the features they have in common.” The court noted the differences between the bottles as pointed out by Aldi, such as the use of wording on their bottles (as opposed to lack thereof on the M&S bottles) and the watch strap label on the Aldi stoppers with the Aldi logo on top. However, it was held that these are “differences of relatively minor detail which do not affect the lack of difference in the overall impressions” produced on the consumer.

The court concurred with Aldi’s submission regarding the relevant sector of the market, which was spirits and liqueurs in the UK generally. M&S’s submission of a highly specific relevant sector being Christmas liqueurs in the UK has been rejected.

Aldi attempted to draw attention to other gin bottles produced by major drinks manufacturers that were very similar in shape to the disputed gin bottles but Judge Hacon concluded that all of them were “visibly different from the botanics shape” of the disputed bottles. He added that none of them had a snow effect or an integrated light.

M&S’s representatives expressed their satisfaction with the decision, emphasising its importance in terms of protecting their innovative edge and consumers’ trust in M&S’s product quality and sourcing standards. Aldi stated that they were disappointed with the result and that they intend to appeal the judgment.

Geldards Comment

As discussed in our previous article, the basis of M&S’s claim was that they held registered design rights which included the integrated light feature, the gold leaf flakes and a variety of winter graphics.

The Registered Designs Act 1949 (“RDA”) is the main source of statutory law in matters involving registered designs. The primary consideration in registered design infringement cases is whether the designs in question create a “different overall impression on the informed user”.

In addition to the RDA, the courts take into account the relevant case law. The four-part test for infringement devised in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 was applied in the proceedings involving M&S and Aldi. As part of this assessment, the court determined the relevant market sector to which the disputed products belong to, identified the informed user, decided the designer’s degree of freedom in developing the designs and lastly, compared the designs, taking into account the three aforementioned factors and the overall impression created by them. Judge Hacon held that the light-up gin bottles do not create a different overall impression on the informed user and that such user would consider them to be strikingly similar. Designers’ freedom was also assessed to be significant in this case. Therefore, the court held that Aldi’s design infringed on M&S’s registered design rights.

This decision means that having waved goodbye to Cuthbert the Caterpillar (which has since made an inconspicuous return to Aldi’s shelves just as “Cuthbert”), consumers are now not likely to see the return of Aldi’s light up festive gin in the same format as in the last couple of years any time soon, if at all.

The judgment is also a useful reminder that minor discrepancies between the designs may not suffice to prevent a successful registered design infringement action where the overall impression created by them is the same and the legal threshold for infringement is met.

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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