Definitely under the influence: Aldi left in low spirits as Court of Appeal confirms gin bottles infringe M&S's registered designs

The Court of Appeal ("CoA") has confirmed an infringement finding by HHJ Hacon that Aldi's light up glitter-globe gin/liqueur bottles infringe M&S' registered design rights.

M&S asserted a number of registered designs, each filed on 29 April 2021, and with the following illustrations:

"UK 78"
 

"UK 80"
 

"UK 82"
 

"UK 84"

The Aldi products complained of, launched in November 2021 (i.e. a year after M&S's product range was introduced to the market in autumn 2020), are shown here:

This is the first success in a registered designs case at the CoA for a significant number of years. We look at what it means for the enforcement of registered designs, the fight against lookalikes, and some specific points about the law.

Enforcement of registered designs

Before looking at the case in detail, some context is important. This is the first UK CoA level case where the registered design owner has been successful for a number of years. Why is that?

• Very few cases make it to the CoA in the first place. It follows that it tends to be the trickier cases and, as a result, it is perhaps unsurprising that they are not always successful.
• Registered designs have, historically, been interpreted very narrowly, in part due to case law from the EU. The case law of the EU was expressly stated to have been followed in this case, but the UK's departure from the EU has now given the courts more freedom to decide cases. It will be interesting to see if the broader interpretation of designs in this case is the start of a new trend.
• In our experience, registered design cases rarely reach the courts due to their effectiveness, either pre-action or as part of online enforcement strategies. Many proposed defendants seek to settle once they have seen the strength of a registered design owner's case, whereas we tend to see more defendants challenging subsistence of rights where unregistered designs are involved. This is another potential explanation as to why we see more successful unregistered design cases than registered ones.
• Registered designs are often very poor in their quality. Many companies and individuals file designs without the support of legal advice, and even where legal advice has been obtained there has been insufficient regard to how the design might be infringed. The Supreme Court's decision in the Trunki case (Magmatic v PMS) observed that it is the responsibility of the designer seeking protection to ensure the designs are correctly filed (and noted that several can be filed at once).

Therefore, it remains our view that registered designs are a very effective way of protecting against infringement, and this case proves that, with the right case, registered designs can be successful.

Enforcement against lookalikes

Lookalikes are everywhere. Many are dealt with using online brand protection strategies, such as our own AI-powered Saturn brand protection service. To learn more about online brand protection visit our dedicated guide.

Trade marks and passing off often do not succeed against lookalikes, as the infringer chooses a strong brand of its own. That's not to say they never succeed, by any stretch (we have seen a lot of success, in fact), but it can be tricky sometimes.

What this case emphasises is that designs are a potent weapon in the fight against lookalikes. The designs need to have been registered carefully, but they can stop the sale of infringements even where a different brand is present on the product. We have been recommending to clients for years that they adapt their protection strategies to make greater and better use of designs, and they are now reaping the benefit of doing so, in the same way that M&S has done in this case.

The M&S v Aldi case in more detail

The appeal focused on a few key themes.

Interpretation of registered designs

1. Principles
   
   The principles were confirmed to be:
   • Scope of protection – the design must be interpreted objectively. In particular, circumstances pertaining to the conduct of the proprietor of the design, and by extension the intention of the designer, are not relevant: Celaya Emparanza.
   • Where images are photographs of a product, the design claimed consists of the features of the product - the lines, contours, colours, shape, texture, materials and/or ornamentation visible in the photographs.
   • Where many designs have been registered on the same day, each of those must be treated separately, and it is impermissible to interpret one registration by reference to another, still less to amalgamate them.
      
2. Application
   
   The CoA applied this to the claimed designs and agreed with M&S that:
   • two (UK 82 and UK 84) depicted a clear bottle filled with a clear liquid photographed against a dark background (and not, as Aldi contended, a dark coloured bottle and/or a dark coloured liquid). This was "tolerably clear" from the images showing the glass clear at the top of the bottle where the stopper had been inserted, at the neck of the bottle, at the dimple in the base of the bottle, and the images on the reverse of the bottle being as crisp as the scene on the obverse. The images had simply been edited to remove the background outside the outlines of the bottle.
   • the other two (UK 78 and UK 80) showed a light. This was also tolerably clear from the images, in particular the obverse scenery in off-white and the reverse scenery in gold, the neck of the bottle with a golden shimmer and (in the case of UK 80), the illuminated flakes, which together suggested an internal source of illumination.
      
3. Relevance of Manufactured Products in Interpretation
   
   Arnold LJ said that these conclusions were confirmed by his inspection of an example of the M&S products. The court confirmed that it is legitimate for the Court to inspect the actual products made to the design by the Claimant, citing PepsiCo v Grupo Promer, as applied by the CoA in P&G v Reckitt Benckiser and Dyson v Vax.
    
4. Relevance of Indication of Product
   
   There has been a lot of commentary over the years about whether a "description" filed with a registered design can be an aid to interpreting the design, or not. The settled position is that for UK registered designs it can, and for EU registered designs it cannot. An "indication of product" in the registered design can be relied upon to resolve an ambiguity as to what is shown in the image: Green Lane Products.
   
   In this case, however, there was a change – between the High Court and CoA hearings the UK Intellectual Property Office (UKIPO) corrected a mistake on the register whereby an "indication of the product" was inserted on the register as a "description". By the time the CoA hearing, it was an "indication of product".
   
   This change meant that the indication of product ("Light Up Gin Bottle") could be relied upon to answer the question of whether UK 78 and UK 80 showed a light.
   
   The Court therefore focused on registered designs UK 78 and UK 80, finding that UK 82 and UK 84 added nothing to M&S' case.

Assessment of infringement

1. Principles
   
   On the principles, Arnold LJ confirmed that s.7(1) of the 1949 Act grants a registered design owner "the exclusive right to use the design and any design which does not produce on the informed user a different overall impression". The question of infringement therefore came down to whether the designs of Aldi's products produce on the informed user a different overall impression to each of the Registered Designs.
   
   The four-stage approach to the interpretation of a registered design was explained in Cantel v ARC:
   
    
   "(1) Identify the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong.
   
   (2) Identify the informed user, and having done so determine (a) the degree of the informed user's awareness of the prior art and (b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs.
   
   (3) Determine the designer's degree of freedom in developing his design.
   
   (4) Assess the outcome of the comparison between the registered design and the contested design, 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 designs which have been made available to the public (the "design corpus"),

   
   but ignoring:
    

   (d) features of the designs which are solely dictated by technical function. It should be borne in mind that
   
   (e) the informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters."
2. Design Corpus
   
   For 4, the relevance of the design corpus was established in P&G v Reckitt Benckiser and applied in many subsequent cases. If a new design is markedly different from anything that has come before, it is likely to have a greater overall visual impact than if it is 'surrounded by kindred prior art'.
   
   Therefore, protection for a strikingly novel product is wider than for a product which is incrementally different from the prior art.
    
3. Grace Period
   
   The CoA confirmed that disclosures by the designer during the 12-month grace period are to be disregarded when assessing infringement as well as validity. The rationale for this provision is to allow the designer (or their successor in title) to test products embodying the design in the market before deciding whether to apply to register the design. If it only applied to validity, as Aldi suggested, then the purpose of the grace period would be very significantly reduced, or potentially removed, as interpretation for the purposes of infringement would be far too limited.
   
   This includes any design that does not produce a different overall impression on the informed user that is disclosed by the designer during that period, not just the precise design that is later registered. Therefore, different designs that were disclosed by the designer during the grace period could be taken into account if they do produce a different overall impression on the informed user (and this could be relevant to interpretation more generally).
   
   The Court clarified that the grace period covers the 12 months preceding the application for the registered design, starting from the earliest date – so if there is a priority date, the 12 months preceding that is the relevant period.
    
4. Assessment
   
   The CoA could only intervene if HHJ Hacon had erred in law or principle. The correct approach was to compare the registered designs and the Aldi products in the same states (for example, with the glitter dispersed through the bottle, or settled at the bottom). Arnold LJ found that the judge had effectively done this, despite not having said so explicitly.
   
   The weight to be given to the shape of the bottles and the stopper was a matter for the judge. He had taken account of the design corpus (which included the shape of the bottle) and made no error of principle in comparing the overall impressions of the Aldi products with those of the registered designs. His conclusion of infringement was one that he was fully entitled to reach, and the finding of infringement was upheld.