M&S v Aldi – lookalike claims lit up by design rights

As lookalike products rise in prominence, the Intellectual Property Enterprise Court's (IPEC) recent ruling that the sale and advertisement of Aldi's 'Infusionist' range of flavoured gins gins infringed M&S's UK registered designs protecting the light-up bottles containing its 'Snow Globe' gin range (Marks and Spencer PLC v Aldi Stores Limited [2023] EWHC 178) highlights the utility of registered design rights in circumstances where other intellectual property rights (IPR) are often less able to provide protection.  Following a consequential and further arguments hearing held on 24 February 2023, it seems that Aldi may seek to appeal the decision potentially offering the Courts another opportunity to advance the law in this area.

The dispute

There continue to be many widely publicised examples of retailers taking legal action to protect their much-loved products against 'lookalikes' circulating in the market.  Discount supermarkets are adept in their ability to toe the line in this space and as a result many 'lookalikes' cases settle – take last year's spat between M&S and Aldi in relation to their respective caterpillar cakes (as covered extensively in RPC Bites here). For this reason, judgments in the 'lookalikes' arena are hotly anticipated and, in this case, M&S and Aldi are once again at loggerheads.

M&S's revised 2020 'Snow Globe' gin range, incorporating edible gold flakes suspended in the gin, a bottle with a built-in light in the base, and a festive winter themed silhouette design around the outside went to market in Autumn 2020. In November 2021, Aldi launched its 'Infusionist' gin liqueur, which also incorporated edible gold flakes, a light-up bottle and wintery tree silhouettes.

                M&S UKRD 613428                                                                    Aldi's infringing product

M&S issued design right infringement proceedings against Aldi in December 2021, alleging that Aldi's 'Infusionist' gin liqueur, infringed 5 of its UK registered design rights (the UKRDs) for a light-up gin bottle registered in April 2021, with a priority date of 15 December 2020. The relevant designs for the purposes of these proceedings protect (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

The court first considered whether M&S's 'Snow Globe' bottle clearly displayed all of the features protected by its UKRDs, and then turned to the application of the legal test for design right infringement i.e. whether, for an informed user, the design of Aldi's 'Infusionist' gin liqueur bottle created a sufficiently different "overall impression" to M&S's UKRDs.

Did M&S's 'Snow Globe' bottle clearly display its UKRDs?

The images used for the registration of M&S's UKRDs were photographs of its 'Snow Globe' gin bottles (as shown above). Since two of M&S's UKRDs showed the product against a light background (causing the light up feature of the bottle to be less clear) and two showed it against a dark background (see UKRD 613428 shown above), there was a dispute as to whether the integrated light feature inside M&S's 'Snow Globe' gin bottle had been successfully incorporated in all of M&S's UKRDs.

Although Judge Hacon noted that M&S had included the description 'Light Up Gin Bottle" when registering each of its UKRDs (and each of the parties noted that there was some ambiguity over whether this had any legal effect), Judge Hacon confirmed that registered designs are to be interpreted objectively by the court without having regard to the intention of the owner of the registered designs. In doing so, he found that only the UKRDs showing the bottle against a dark background had successfully incorporated the integrated light feature. A consideration for design rights owners, is therefore that descriptions of the design may not on their own confirm the scope of protection offered by the registered design but at the same time they are not entirely irrelevant as contrary to the position in the EU, descriptions are published alongside design registrations in the UK. In this example, had M&S only registered its designs on a light background, it may have run into difficulty relying on the integrated light feature as a registered design for want of this being sufficiently clear on the face of the design drawing.

Did Aldi infringe M&S's UKRDs?

In assessing whether Aldi had infringed M&S's UKRDs, the court followed the well-established test for comparing an allegedly infringing design with a UKRD as set out in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345 (Pat).

1. The sector in which the UKRDs are applied
   M&S sought to argue that the relevant sector should be 'Christmas liqueur in the UK' as sales figures for its 'Snow Globe' gin range were highest in December. However, highlighting the importance of applying an objective assessment, Judge Hacon confirmed that the relevant sector was the UK spirit and liqueur sector generally – the decorative aspects of M&S's UKRDs depicting winter did not limit the months of year in which sales could be made and the main features of the UKRDs existed in the wider UK spirit and liqueur market.
   
   
2. The 'informed user
   Design right infringement is assessed from the perspective of the informed user i.e.  a "particularly observant" user of the product in which the designs are intended to be incorporated, who pays a "relatively high degree of attention" to the product, has knowledge of the design features existing in the sector and "conducts a direct comparison of the designs in issue". The informed user was therefore identified as the UK consumer who purchases spirits and liqueurs for use in the home, as opposed to a supermarket buyer.
   
   
3. The designer's degree of freedom in creating its design
   Generally speaking, the higher the degree of freedom of the designer, the easier it may be to demonstrate design rights infringement. Further, design rights cannot subsist in features of a product which are solely dictated by the product's technical function. Although Aldi sought to argue that the distribution and use of gold flakes, the integrated light feature at the base of the bottle and the upper curved portion of M&S's bottle being free of markings were solely dictated by technical function, Judge Hacon found that each of these features (although practical in nature) were aesthetic choices rather than technical requirements and that the designers of M&S's 'Snow Globe' bottle had "considerable freedom, particularly with regard to the shape of the bottle and the design to be printed on it" which was distinct from other bottles on the market.
   
   
4. The "overall impression" on the informed user
   This is the essence of design rights infringement cases – a comparison of the overall impression conveyed by, in this case, M&S's UKRDs with the design of Aldi's 'Infusionist' gin liqueur bottle, on the informed user. This exercise includes consideration of the 'corpus' of other designs available in the relevant sector (including designs by the Claimant) at the relevant date i.e., 12 months prior to the application or priority date for the UKRDs (which was 15 December 2019 in this case). Although four bottles within the design corpus included an integrated light feature, five had some form of snow effect, and two bottles incorporated both of those aspects, none (aside from the M&S 2019 'Snow Globe' gin bottle), featured the 'botanics' bottle shape and snow effect similar to M&S' UKRDs. The M&S 'Snow Globe' gin bottle was therefore notably different from the corpus of existing designs.  Where this is the case, it is usually more difficult for subsequent designs to create a different overall impression to the registered designs.

Aldi, however, sought to emphasise several differences between its design and M&S's UKRDs, including the use of the words "The INFUSIONIST Small Batch" on its bottle (M&S's UKRDs featured no words), the brighter and busier winter scenery, and the fact that its stopper was darker in colour. However, Judge Hacon found that these differences were "of relatively minor detail" in comparison to the significant similarities, which would be striking to the informed user, namely: (i) the identical 'botanics' shape of the two bottles, (ii) the identical shape of the stoppers, (iii) the wintry tree scenes over the sides of the bottles, (iv) the 'snow effect' created by the gold flakes, and (v) the integrated light feature in the base of the bottles. As such, Aldi's 'Infusionist' gin liqueur bottle failed to produce a different overall impression to M&S' UKRDs and Aldi was found to have infringed those UKRDs.

Key takeaways

For lookalike products in the food and drink sector, demonstrating a likelihood of confusion for trade mark infringement and passing off claims can be an uphill battle, particularly when up against discount supermarkets: it will inevitably be tricky to prove a likelihood of a consumer entering Aldi and purchasing an Aldi product under the confusion of it being an M&S product. Brands face this issue time and time again. Consequently, the reliance on registered designs in this case (where likelihood of confusion is irrelevant) demonstrates the value of registering designs to combat lookalike products when protection pursuant to other IP rights falls short.