First cake, now gin: the latest in the M&S and Aldi battle

Marks & Spencer (M&S) has prevailed in its latest IP-related dispute against Aldi.

In the IPEC judgment handed down at the end of January 2023, Justice Hacon found Aldi liable for infringement of M&S's registered designs concerning its gin liqueur product. This follows last year's dispute between the two parties concerning the Cuthbert the caterpillar cake which was ultimately settled.

Background

Towards the end of 2020, M&S launched a new range of gin-based liqueurs in festively decorated bottles. The bottles were fitted with an LED light which illuminated the contents of the bottle (particularly as the liqueur contained tiny gold flakes).

Aldi started to sell its own gin liqueur which also contained gold flakes in a light-up bottle in November 2021. M&S alleged that Aldi’s festive gin liqueurs had infringed its registered designs, relying on five UK registered designs. All of the registered designs had a registration date of 29 April 2021 and a priority date of 15 December 2020 (which was not disputed). It is worth noting that the validity of these registered designs was not challenged.

Decision

Hacon J held that Aldi had infringed M&S's registered designs because its products did not create a different overall impression to M&S's. The court followed the test for infringement of UK registered design rights as set out in Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat).

Hacon J did identify differences between the between the registered design and Aldi's products, namely:

• The differences in the festive winter scenes (colour / brightness / busyness);
• References to "Infusionist" brand on Aldi's bottle;
• Aldi's bottle had a clear "front", yet M&S's registered designs did not; and
• Aldi's stoppers hade a watch strap label with the Aldi logo on top and the stoppers themselves were darker.

However, he found that such differences were relatively minor and as such did not create a different overall impression.

Comment

This is a helpful reminder of the test for UK registered design infringement as we find that these type of cases often settle before proceedings are issued or before a decision. 

This case also shows that it is not always easy to interpret features of a registered design even when the image in the design is a photograph (as opposed to a line drawing). A design must be interpreted objectively but in this case the issue was whether one of the registered designs had a feature of an integrated light in the base of the bottle. The court ultimately found that two of the registered designs on dark backgrounds showed the integrated light feature. Whilst Hacon J referred to this case as an "exception" (because typically where the image is a photograph there would not be any issues regarding interpretation), it is feasible that there could be other cases where it could be difficult to interpret features of a registered design even where the image in the design is a photograph.  Thought should be given to such features at the time of filing the application.

We understand that Aldi intends to appeal this decision so we will watch out for further updates.