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10 July 2023

Marks & Spencer win latest supermarket IP battle against Aldi

Following the IP dispute between M&S and Aldi over their competing caterpillar cakes, Judge Hacon has ruled in an IPEC decision ([2023] EWHC 178 (IPEC)) that Aldi’s Infusionist gin bottles infringes M&S’ registered designs for their snow-globe themed gin bottles.

In Autumn 2020, M&S introduced a range of snow-globe themed gin bottles for the Christmas market. The bottles depicted a festive scene printed around the periphery of their exterior and contain gold flakes and a LED light to illuminate the flakes when the bottle is shaken. In this action M&S relied upon five registered designs relating to their snow-globe bottles and which claimed a priority date of 15 December 2020, making use of the 12-month grace period for earlier disclosures made by M&S. These five registered designs are shown below.

     

Registered design  1                                                         Registered design  2

 

 

Registered design  3                                                  Registered design  4

 

 

Registered design  5

 

The following Christmas, Aldi introduced their own competing product, perhaps somewhat cheekily labelled “Infusionist”, which M&S alleged infringed their registered designs. Aldi’s bottles are shown below.

Aldi’s Infusionist bottles 1

The relevant sector

Judge Hacon began his judgment by setting out the four-step infringement test found in H&M Hennes & Mauritz BV & Co KG v OHIM. The first step requires the relevant sector to which the products belong be determined.  In this regard Hacon considered that, while the theme of the bottles suggests winter, this was not a constraint on the months of the year in which sales could be made, and so agreed with Aldi that the proper sector was “spirits and liqueurs in the UK”, rather than the more specific “Christmas liqueurs in the UK” as argued by M&S.

The informed user

The second step is to identify the informed user of the design. The parties both submitted that the informed user was not a supermarket buyer but a consumer; who purchases and consumes spirits and liqueurs, and so the judge proceeded on that basis.

Design freedom

In the third step, Judge Hacon assessed the extent of freedom available to the designer in developing the design.

While a witness for M&S submitted that there was a limitation on the thickness of the neck of the bottle in that the gold flakes had to be inserted through it, Judge Hacon did not consider that this was much of a limitation. Other limitations which were identified included that the flakes had to be gold in colour (as white flakes could only be made with titanium oxide but legislation prevents their use), and that the light had to be placed at the bottom of the bottle as there was no other practical place for it (although of course there was no requirement for a light to be provided in the first place).

Other than these limitations, Judge Hacon considered that the designer had considerable freedom, especially with regard to the shape of the bottle, for which a wide selection of off-the-shelf shapes were readily available, and also with regard to the design to be printed on it.

 Comparison of the overall impression of the two designs

In the fourth step, a comparison of the overall impression of each of the two designs is made while taking into account, (a) the sector in question, (b) the designer’s degree of freedom, and (c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public.

Judge Hacon found the following common features between the M&S and Aldi designs:

(i) The identical shape of the bottles and of their stopper;

(ii) A winter scene over the entirety of the straight portion of the side, consisting in one case entirely, and in the other case mostly, of tree silhouettes;

(iii) A snow effect; and

(iv) An integrated light

The differences were found to be:

(i) M&S’s winter scene is in white only while Aldi’s is in which plus a colour;

(ii) M&S’s winter scene features stag and a doe among trees, whereas Aldi’s feature trees only;

(iii) Aldi’s branding includes the label “Infusionist”, whereas M&S’s bottles omit any branding;

(iv) M&S’s bottles do not give the impression of a “front” to the bottle, whereas Aldi’s “Infusionist” branding does give such an impression;

(v) Aldi’s stoppers have a watch strap label, whereas M&S’s stoppers do not have any label; and

(vi) Aldi’s stoppers are darker in shade.

On considering these similarities and differences, Judge Hacon considered that differences were of relatively minor detail which did not affect the lack of difference in the overall impression produced by Aldi’s bottles. As such, Judge Hacon decided that Aldi’s bottles do not produce a different overall impression on the informer user than that produced by M&S’s registered designs. Judge Hacon therefore concluded that Aldi’s bottles infringed M&S’s registered designs.

Key points of note

One of the points to arise from this decision is the effect of the description on the scope of protection of registered designs. Providing a description for registered designs is optional under both UK and EU law. In these proceedings, both parties argued that the description should be irrelevant to the interpretation of the scope of protection. While the text of the description is irrelevant for Registered Community (EU) Designs, the position in the UK is less certain. This is because the UK Registered Design Rules 2006 state that the indication of intended products, which is one of the fields which is completed when filing a registered design application, is irrelevant for infringement, but the Rules do not mention whether the description has any effect. Additionally, when a description is provided by the applicant, it appears on the UK register, whereas descriptions do not appear for Community Registered designs on the European register. Judge Hacon commented on this uncertainty in the decision and highlighted that there may exist a risk that third parties consulting the UK register may be misled by the description as to the scope of protection if it is the case that the description has no effect. This is an area which we hope will be clarified in future decisions.

A further point of note was regarding the 12-month grace period. This period allows a designer to file registered design applications within 12 months of its public disclosure by the designer. The intention of the grace period is to allow the designer to test the market for their design before seeking registered design protection for it without the prior public disclosure counting against the validity of the registered design. In this decision, Judge Hacon considered the question of whether a disclosure by the designer during the grace period is irrelevant to an assessment of novelty and individual character only if it is the specific design claimed in the registered design in suit, or whether the same applies to other similar designs disclosed by the designer during the grace period. After considering three different interpretations of the wording of the law, Judge Hacon decided that any disclosure by the designer of any design at all (not just designs which are identical to, or which give the same overall impression as, the registered design in question) in the 12-month grace period should not count towards the assessment of novelty and individual character of the registered design.