M&S "gin-joys" registered design victory against Aldi in E&W Court of Appeal judgment regarding flavoured liqueur lookalikes

In a decision delivered this week, the Court of Appeal of England and Wales (the Court) has upheld the design infringement claim brought by Marks and Spencer (M&S) against Aldi in respect of their gin-based flavoured liqueur range, in what may be a catalyst for a shift from trade mark law to design law for product "lookalike" claims.  

Background

In 2020, M&S launched a range of gin-based flavoured liqueurs (including a clementine flavour) for the Christmas market, which were sold in festively decorated bottles containing edible gold flakes, and (when the bottle is shaken) resembled a golden snow globe (the M&S Product).  The base of the bottles also included an LED light which illuminated the contents of the bottle.

In April 2021, M&S filed an application (with a priority date of 15 December 2020) seeking to register a number of designs relating to M&S Product (the Registered Designs), including the following: 

In November 2021, Aldi also launched a gin-based flavoured liqueur product range for the Christmas market, which was - wait for it - also sold in a decorated bottle containing gold flakes and an LED light, and available in two flavours, clementine and blackberry (the Aldi Product): 

M&S predictably sued Aldi for design right infringement, and succeeded at first instance. His Honour Judge Hacon, sitting in the Intellectual Property Enterprise Court (the IPEC), issued an Order on 24 February 2023 in favour of M&S and granting the relief sought, on the following grounds (as set out in full in his judgment): 

1. Only the Registered Designs showing the M&S Product against a "dark background" (i.e. like the design labelled "UK 84" above) successfully incorporated the existence of an LED light feature within the design, despite the fact that all the Registered Designs contained a reference to the light feature in their text descriptions; 
2. Nevertheless, the differences between the Registered Designs and Aldi's Product were of "relatively minor detail" and the overall impression created by Aldi's Product on the informed user (taking into account other designs in the same sector) was not different to the Registered Designs; and
3. Although use of the gold flakes in the bottles were restricted by technical requirements, M&S' designer had enjoyed a considerable degree of freedom in designing the M&S Product, including the determination of various aesthetic features such as the shape of the bottle and stopper. 

Aldi appealed.  

The Court's judgment

The main issues for the Court to determine were, summarily, whether: 

1. The design labelled "UK 84" above showed a dark-coloured bottle or a bottle containing a dark-coloured liquid, as suggested by Aldi, or a bottle against a dark background as maintained by M&S and ultimately held by HHJ Hacon; 
2. The "indication of product" section of a registered design, as opposed to its description, can be taken into account to assist in interpretation of the design; 
3. HHJ Hacon's assessment of infringement was correct in finding that the Aldi Product did not produce on the informed user a different overall impression to the Registered Designs; and 
4. Rules regarding the Registered Designs' grace period and priority date had been applied correctly. 

Dark-coloured bottle/liquid or background

In respect of the first issue, the Court observed that where, as in this case, the images relating to UK registered designs are photographs of a product, the design claimed consists of the features of the product visible in the photographs. Each registration must be considered separately, but it is permissible (where a registration contains more than one image) to consider the images together.

Turning to the Registered Designs, the Court found it "tolerably clear" that M&S was correct because (amongst other factors) the images could not show a dark-coloured bottle as the glass was clear at the top and neck of the bottle, nor could they show a dark-coloured liquid as there would be a visible gap between the top of the liquid and the stopper. In fact, the Court also found it "tolerably clear" that the images shown against a white background (including "UK 80" above) also suggested an internal source of illumination, not least because they showed a dimple in the base of the bottle which appeared to have a light in it.  

Importantly, the Court went on to confirm these findings by inspecting a physical example of the M&S Product, disagreeing with HHJ Hacon that the products are "irrelevant to interpretation of the design". The Court referred to the decision of the Court of Justice of the European Union (CJEU) in PepsiCo Inc v Grupo Promer Mon Graphic, C-281/10, which found that it is certainly permissible to use physical products in order to "confirm the conclusions already drawn" from the designs. 

This Kat after one too many flavoured liqueurs... 

Photo: momo 

Indication of product v description

In respect of the second issue, this arose because the UK Intellectual Property Office (UKIPO) had explained that, in April 2023, it had become aware that "indication of product" information provided by applicants was incorrectly showing in the "description" section, and this issue applied to the words "Light Up Gin Bottle" which had previously appeared as a description for the Registered Designs. 

The Court held, based on Stone's European Union Design Law, that the "indication of product" wording can be relied upon to resolve an ambiguity as to what is shown in the image in a design registration, and therefore assist in the interpretation of the relevant design. 

Assessment of infringement

As for whether HHJ Hacon had correctly assessed infringement, the Court began by setting out (as HHJ Hacon had done) the four-stage approach established in Cantel Medical v ARC Medical Design [2018] EWHC 345 for determining whether there is a different overall impression, namely: 

1. Identify the sector to which the relevant products belong; 
2. Identify the informed user (and their level of awareness/attention); 
3. Determine the designer’s degree of freedom; and
4. Assess the outcome of the comparison between the registered design and the contested design, taking into account the above. 

The Court found that HHJ Hacon's assessment of all four stages had been correct. In particular, it agreed with HHJ Hacon that the design of the M&S Product had had considerable freedom, particularly with regard to the shape of the bottle and the design to be printed on it, and there was no design constraint requiring the liqueur to be illuminated.

Further, in relation to the design corpus, HHJ Hacon had assessed 33 bottles, of which four products (excluding the M&S Product) had an integrated light, but none with a shape like that of the Registered Designs. 

The Court therefore found HHJ Hacon had consequently been fully entitled to find that, with the design corpus in mind, each of the similarities between the two products (including the identical shapes of the bottles and stoppers, the winter scene, snow effect and integrated light) would appear significant to the informed user, and cumulatively they would be "striking". Because of these common features, the Aldi Product did not produce a different overall impression to the Registered Designs. 

Grace period

The last issue for determination was Aldi's contention that HHJ Hacon had been wrong to disregard  a number of designs disclosed by M&S and relied on by Aldi, on the basis that they did not form part of the design corpus due to the effect of the priority date (15 December 2020) and the grace period (which started on 15 December 2019).

Aldi's argument was that, because Section 1B(6) of the Registered Designs Act 1949 (RDA 1949) provides that a disclosure during the grace period is to be disregarded when assessing novelty and individual character for the purposes of determining registrability of a design, but there is no corresponding provision which applies to the assessment of infringement,  it follows that such disclosures must not be excluded when considering infringement.

The Court did not accept this reasoning,  as the underlying logic is that a registered design can only create one overall impression on the informed user, whether one is considering validity or infringement (see also Pulseon Oy v Garmin (Europe) [2019] EWCA Civ 138). 

The Court court also found that:

1. the rule in Section 1B RDA 1949 protects the designer from adverse consequences of any disclosure during the grace period of either (a) the registered design itself, or (b) any design which does not produce a different overall impression to that of the registered design; and  
2. the overall impression of the Registered Designs should be assessed as at the priority date, despite the fact that in this case the parties had agreed that the date of assessment was the filing date. 

Aldi's appeal was therefore unsuccessful. 

Comment

Given Aldi's fairly consistent success (to the surprise of many practitioners) in rebutting the spate of trade mark infringement claims brought against it by competitors in recent years in respect of "lookalike" products, it will be interesting to see if this judgment acts as a turning point, and suddenly we see retailers rushing to register their products as designs rather than (or in addition to) trade marks.