Design (rights) on the rocks: M&S prevail in Aldi's gin bottle appeal

Following its recent success in the Intellectual Property Enterprise Court (IPEC) trade mark infringement and passing off dispute against cider-maker, Thatchers (see here for our blog on this: Thatchers v Aldi – as no confusion found between cloudy ciders, are courts souring on established brands?), Aldi will be disappointed to have lost its legal battle against M&S. This dispute concerned the designs of their respective festive light up bottles containing a gin-based liqueur with edible gold flakes, which creates a snow globe effect when shaken.

The Court of Appeal upheld the IPEC decision (Marks and Spencer PLC v Aldi Stores Ltd [2024] EWCA Civ 178 (27 February 2024) that Aldi had infringed M&S's registered designs of its snow globe light up gin bottle. (Our insights on the initial IPEC judgment can be found here - First cake, now gin: the latest in the M&S and Aldi battle).

Does the grace period apply in the context of infringement?

In relation to the effect of the grace period, Aldi argued that M&S's disclosures of the registered designs within the grace period should be taken into account for the purposes of infringement. Alternatively, Aldi argued that if that was not the case, it was incorrect of the IPEC judge to decide that all designs disclosed by the designer within the grace period should be disregarded and it should only be disclosures of the same design as the registered design.

Arnold LJ confirmed that disclosures of the registered design within the grace period are to be disregarded when assessing infringement.  If this was not the case, it would defeat the purpose of the grace period by reducing the scope of the design's protection. There was no legislative basis to support this.

The same approach also extended to designs disclosed by the designer during the grace period which created the same overall impression as the registered design; these are to be disregarded when assessing infringement. However, this did not extend to all designs disclosed by that designer within the grace period.

At what date should overall impression be assessed?

In relation to the effect of the priority date, it was held in the IPEC that overall impression of the registered designs should be assessed as at the priority date. Aldi appealed on the basis that this was procedurally unfair given it was common ground between the parties at trial that the relevant date for assessment was the date of filing. However, Aldi had not established it was prejudiced by the judge on this point and had not shown that it had affected the evidence or arguments at trial.

Separately Aldi argued that infringement could not be assessed at any date prior to the filing date given that there could be no registered design to infringe, and the filing date was the relevant date for assessing overall impression.

Arnold LJ disagreed and concluded that overall impression of a registered design could indeed be assessed earlier than the date the design could be infringed. It was the priority date, and not the filing date, that applies to both validity and infringement, because disclosures before filing can affect the overall impression of the design.

Had the images included in the registrations been properly interpreted?

The scope of protection of a registered design depends on the proper interpretation of the registration, in particular, the images included in that registration. On the question of whether one of the features of the registered designs was an integrated light in the base of the bottle, the IPEC judge had considered the images and decided that two of the bottles were created against a dark background and showed the integrated light feature, but the ones which were not, did not show a light feature within the bottle. On appeal, this was reconsidered because no reason had been given for the finding and the IPEC judge had failed to consider the issue as pleaded.

Arnold LJ viewed enlarged versions of the images via the UKIPO website and concluded that 'it was tolerably clear from inspection' that M&S's interpretation was correct - two of the bottles showed a clear bottle filled with clear liquid photographed against a dark background. The reasoning provided for this conclusion included the fact that the images showed the glass was clear at the top of the bottle (so it could not be a dark coloured bottle) and there was no gap between the top of the liquid and the stopper itself was visible (so it could not be a dark coloured liquid).

In addition, Arnold LJ said it was also "tolerably clear" that the other bottles, not pictured against a dark background, also showed a light, due to the difference in appearance of the scenery printed on the bottles, the shimmer in the neck of the bottles, the illumination of the flakes within the bottles and the dimple in the base of the bottles. On this basis he found it difficult to understand, based on the visual evidence, why one would conclude that some had a light but not others.

Physical examples of goods actually marketed

The conclusion on the above issues was supported by inspecting the physical examples of the M&S goods actually marketed. Arnold LJ confirmed that the IPEC judge was wrong to conclude that these were "irrelevant to interpretation of the design", but rather case law had supported the fact that 'physical embodiments' of the designs in issue could be used "to confirm the conclusions already drawn".

Indication of product

Arnold LJ stated that the above issue was reinforced by a further point. The applications for each of the registered designs included the statement "Light Up Gin Bottle" as an indication of product. Arnold LJ confirmed that the indication of product within a registration can be relied on to resolve ambiguity and assist in the interpretation of the images of a design.

Arnold LJ then reconsidered infringement on the above basis, using the same approach as the IPEC judge, and concluded that the M&S bottles and the Aldi bottles did not create a different overall impression. The differences pointed out by Aldi were of minor detail and did not affect the overall impression.

Had the judge properly compared the designs?

Aldi argued that the judge had not given enough consideration to the impact of the absence of the snow effect and integrated light from M&S's designs (Aldi's designs included such features). It also argued that undue weight was given to the shapes of the bottle and the stopper.

Arnold LJ rejected these arguments on the basis he had decided the designs did contain an integrated light and that weight given to the shapes of the bottle and the stopper was a matter for the judge as part of his overall assessment. 

Comment

This case confirms that the overall impression of a registered design will be assessed at the priority date and any disclosure by the designer of the same design or a design creating the same overall impression will be disregarded when assessing infringement. This will provide comfort for those organisations, particularly retailers, who release different variations of a design to test the market before deciding which is most valuable to register.

Although registering a design is often seen as a cheap and straightforward way of obtaining protection, applicants should carefully consider if there are any ambiguities in their application as this could be crucial to an infringement claim. The images of the design filed should clearly reflect, as far as possible, the reality of the design and physical product. This should be supported by an indication of product which can be used to resolve any ambiguity in the images.

This is unlikely to be the end in the battle of the supermarkets. Fighting to protect their intellectual property rights is proving to be a developing story, with Aldi succeeding in its opposition against M&S's application to register the trade mark "Snow Globe" for the same festive gin bottles subject to this dispute.

With special thanks to trainee solicitor Fiona Sellers for co-authoring this article.