Aldi loses battle with M&S over festive gin
22 February 2023
When Aldi launched a festive gin bottle with a snow globe effect in a light up bottle few could help but draw comparison with the very similar M&S product launched a year earlier. The visual similarity and the price differential between the M&S version and the Aldi version were out of the playbook that is now familiar. M&S protected the appearance of their bottles with registered designs in the UK and sought to enforce these IP rights by taking Aldi to the High Court.
M&S protected various aspects of their festive ‘Snow Globe’ light up gin bottle product in multiple separate UK design registrations. The designs show, using photographs:
- the wintry scene on a ‘botanics’ shaped bottle filled with liquid;
- the wintry scene on a ‘botanics’ shaped bottle with gold flakes in the liquid;
- the wintry scene on a ‘botanics’ shaped bottle filled with liquid in two different lighting states;
- the wintry scene on a ‘botanics’ shaped bottle with gold flakes in the liquid in a lit state
- the wintry scene as a 2D silhouette
The Aldi ‘Illusionist’ gin bottles have a wintry scene (not identical to the scene on the M&S designs) on an identically shaped bottle with gold flakes in the liquid with an integrated light in the base of the bottle.
It is important to remember that in registered design infringement cases the comparison is between the alleged infringing product and the protected design(s) as registered, not the product on which the design registrations are based.
This distinction becomes less important when the design that is registered is a photograph of the actual product, but even in this instance, the appearance of the registered design is interpreted based on the images used in the design registration and not with the full knowledge of the actual product from which those photographs are taken.
Infringement
The Court found that the Aldi products had the following similarities:
a) identical ‘botanics’ bottle shapes
b) identical stopper shapes
c) a wintry scene over the entirety of the straight sides of the bottle, comprising mostly or entirely of tree silhouettes
d) a snow effect and/or an integrated light
Whilst there were some differences between the Aldi product and the registered designs, these concerned branding, a slightly different wintry scene and a darker stopper, and were found to be minor differences.
The Court found that all 4 of M&S’s UK registered designs for the bottle were infringed by Aldi. The final design for the 2D silhouette of the wintry scene was not asserted.
Dynamic designs
In this case it is important to note that earlier liqueur bottles had variously featured all of a wintry scene, a ‘botanics’ shaped bottle, a ‘snow effect’ in the liquor, and an integrated light. In the judgement we are reminded that when assessing the overall impression created by a design it is important to look at the whole design and the whole body of prior designs, and not to dissect or make a comparison to a single closest prior design.
For designers this means that the strategy of filing multiple different designs to protect different aspects of a product remains the best way of building a wall of protection around a new product. M&S have shown that this can be done even with photographs of a product, where that product has different ‘dynamic’ appearances in use such as the lighting and ‘snow globe’ effects, and these may have a very striking influence on the overall impression created by the design.
Branding elements
Aldi argued that the branding elements (of which the registered designs had none) were important differences, but the Court disagreed, and these were considered to make only minor differences to the overall impression that the designs created.
Copycats and discount retailers should take note of this judgment that the positioning of a trade mark or other branding on a product can influence the appearance of the product, but that this influence will be given appropriate weight and may be slight in the overall assessment of the designs, especially where the absence of branding in the registered design is not a notable feature of the design.
Written description in design filings
At least insofar as one of the M&S registered designs held to be infringed has neither an integrated light nor a snow effect, this would imply that the Court considers the similarity of features a) b) and c) alone in the Aldi product to be sufficient to establish infringement.
This is somewhat surprising as there was a prior design (also by M&S) having an almost identical bottle shape and stopper but with a different wintry scene. That may imply that the Court gave relatively little weight to the particular wintry scene at issue in the present case when assessing the overall impression of the design. Instead it may point to something else unusual in this judgement, and that is a suggestion that UK design law is diverging from EU design law following Brexit, as was perhaps inevitable.
Under EU law the written description which is optional but often included when registering designs is expressly not limiting on the scope of the design. However, UK design law contains no such exclusion. The 4 M&S design registrations all contained a description of the product as a ‘Light Up Gin Bottle’. So it seems even the M&S design registration having images with neither a gold flake snow effect nor an integrated light may have been interpreted by the Court as having an integrated light due to the written description of a ‘Light Up Gin Bottle’. Notably, the prior M&S design had no light in the bottle and so this point of difference is important in the overall assessment of the design. Neither M&S nor Aldi argued that the written description should carry any weight in the assessment of the designs, but it seems that the Court considered otherwise.
Applicants wishing to register designs in the UK may need to think carefully when deciding whether to include any written description of the design when preparing new UK registered design applications.
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP February 2023
