The Court of Appeal has dismissed Aldi's appeal against the 2023 judgement of the Intellectual Property Enterprise Court (IPEC) which found that Aldi has infringed certain design registrations of Marks & Spencer (M&S). The decision is a valuable reminder of the value in obtaining registered design registrations for new products.

In 2020, M&S introduced a new line of Christmas related products, including a gin liquor with edible golden flakes in a light up led bottles. In 2021, Aldi launched the sale of similar light up gin bottles with golden edible flakes under Aldi's trademark "Infusionist". M&S claimed that Aldi was infringing on its design rights.

Designs can be registered under the Registered Designs Act 1949 (1949 Act) and protect the rights in 2D and 3D objects from being reproduced by any third party for up to 25 years.

The legal considerations

When determining whether the M&S registered design right had been infringed, the Court of Appeal began by considering the image of the design that has been registered by M&S. The Court noted that more than 'simply a comparison of the two designs' was required. The Court also commented that often issues of interpretation arise when the design registered is a line drawing, and that that there tends to be less contention when pictures of a product are registered, as was done by M&S. The decision looked at 3 key points:

1. Interpreting the registered design

      Aldi contended that the IPEC had erred in determining that the registered image had a dark background behind the bottle and instead argued that that the image itself showed a dark liquor inside the bottle.

      The Court of Appeal dismissed this argument by Aldi and held that the image showed a dark background and not a dark coloured liquid within the bottle. This conclusion was assisted by the fact that the registered design application included an inscription "Light Up Gin Bottle" alongside it. The Court of Appeal clarified that while the description of a product itself cannot define the scope of the registered design, it can clarify what the image represents and as such, it is recommended that businesses include descriptions of what the product is when registering their designs.

      2. The grace period

          A 12-month grace period afforded to design rights exists to allow businesses to disclose their design to the wider public without registering their design. This enables businesses to market a product and test its likely success before incurring registration costs. Disclosures during this 12-month period will not impact on the novelty or individual character of the design when the registration application is made (1949 Act). Aldi had previously argued that while disclosures during the 12-month grace period were to be disregarded when assessing novelty and individual character for the purposes of determining registrability of a design, there is no corresponding provision in the 1949 Act which applies to the assessment of infringement.

          The Court of Appeal disregarded this argument and found that the purpose of the grace period would be "substantially defeated" if disclosures by the designer during the grace period were relevant when considering infringement, as they would reduce the scope of protection "potentially to nil" and that could not be what was intended by the legislation. This was an important decision by the court, as the products tested during this grace period were different to those subsequently registered. 

          3. The legal test for design right infringement

          When considering design right infringement, the relevant test is that of the informed user. The question is whether an informed user would perceive the Aldi product as giving a different overall impression when compared to the M&S gin bottles. An informed user, unlike an average consumer, is a user of the product to which the design is registered to (in this case, spirits and liqueurs) and has a higher degree of attention compared to the average consumer.

          The Court of Appeal ultimately agreed with the earlier decision of the IPEC that Aldi had infringed the design rights of M&S.

          The Court of Appeal focused on the "overall impression" given by Aldi's gin bottle designs. It was held that the M&S bottle was sufficiently distinct, comparing it with similar gin brands which all did not have a led light or gold flakes in it. Despite the minor differences between the M&S and Aldi bottles (including the use of the "Infusionist" trademark by Aldi), these did not produce a different overall impression to the informed user.

          Takeaway

          Design rights are a useful and often overlooked tool of intellectual property. Brands with distinctive designs should consider registering their designs for greater protection. Other traditional forms of legal protection such as a claim for passing off or misrepresentation may not be as effective in protecting a product from being reproduced by a competitor.

          If you would like to discuss how you may benefit from registering your product design or other intellectual property rights more generally, please contact Alison Bryce, Rebecca Ronney or your usual Brodies contact.

          Contributors

          Alison Bryce

          Partner

          Rebecca Ronney

          Associate

          Clara Wilson

          Trainee Solicitor