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M&S allegin’ design infringement – Aldi sparks new row

by | Dec 23, 2021

‘Tis the season to be jolly, but Marks and Spencer (M&S) is none too happy about Aldi’s two new gin product designs. Whilst Aldi’s Twitter team has been making light of it with some tongue-in-cheek tweets, M&S believes that Aldi has infringed some of its UK registered designs and has commenced legal action. bubbles gf258a373d 1920 1024x683 1

From caterpillar cake to glittering gin

M&S and Aldi have previous in the legal arena, having locked horns (or perhaps antennae?) earlier in 2021 over their respective caterpillar cakes. However, that particular fight was over trade mark rights. This time round, M&S is relying on its registered design rights. M&S originally filed for a series of ten EU registered designs in December 2020 (pre-Brexit). This was after they had launched their products. For many territories, including China, this destroys the chance to obtain registered design protection. Wherever possible, file first and launch later. M&S then followed up with a series of ten UK registered design rights (post-Brexit). M&S deliberately filed separately in the UK as opposed to allowing the UK Intellectual Property Office to ‘clone’ their EU designs. This was presumably done to maximise the length of UK design protection (i.e. they can still have the registered designs in force in the UK in the run-up to Christmas 2045 – save the date). Two of the designs relate to silhouetted decorations, whilst the other eight show variations of light-up bell-shaped gin bottles. Or in other words… Gin-gle bells.

Courting controversy

Aldi isn’t exactly known for treading gingerly when it comes to the thorny issue of copying. They have plenty of copycat products from “Jammy Wheels” (née Dodgers) to “Cheese Puffs” (a.k.a. Wotsits), amongst many others. Whilst similar to well-known brands, there isn’t necessarily any confusion over the origin of the products, so Aldi can walk the line between what is and isn’t an infringement of someone else’s rights. However, flirting with branding is a different ball game to that of registered designs. There doesn’t need to be any confusion or misrepresentation about the origin of a particular product where registered designs are concerned. It’s about whether the infringing product looks too similar to the registered design – is the “overall impression” the same or different in the eyes of the “informed user”? N.B. Not as easy to predict as you might think – try our registered designs quiz to see how your judgment fares in relation to some past design decisions.

Borderline by [M&S] design

Whilst Aldi probably put some careful thought into their product designs, M&S clearly considers that the overall impression is too similar for their liking. That’s not to say that there aren’t any other copycat products out there, but comparatively speaking they are probably small fry whereas it seems clear that M&S wants to nip Aldi’s latest move in the bud. After all, Aldi’s products launched in early November 2021 and things have already ended up in the High Court. Five of M&S’ registered designs form the basis for their legal action against Aldi:

Picture1 This registered design is for the decorative wraparound on M&S’ Christmas gin bottles. Or in M&S’ words: “a winter forest silhouette graphic design”. Note that the trees and animals are dark on a light background – the UK Supreme Court previously confirmed in the Trunki case that colour contrast is a feature of a registered design unless disclaimed (and there doesn’t appear to be any disclaimer in this case).

Picture2 1Picture3 1 This registered design shows M&S’ Christmas gin bottle with gold flakes settled at the base (although that’s not especially clear since these are the only two views in the registration). The right-hand view seems to clearly be illuminated at the bottom, but it’s less clear for the left-hand view. The base doesn’t have the same glow as the right-hand view, but the meniscus region seems to be illuminated in both images. Note that the appearance of the cork is part of the design, as is the shape of the bottle, as is the silhouette design which extends all the way round the back (the curvature of the glass distorts the rear trees in the right-hand image). It is also worth noting that the silhouette appears to be somewhat grey in the foreground – the court papers from M&S say it’s white, but it doesn’t really look white here – and somewhat darker in the background, which is again part of the registered design since there is no disclaimer.

Picture4 1 Picture5 1This registered design is similar to (2) above, except that the gold flakes have been suspended in the gin against a light backdrop. This means that the flakes obscure some of the rear silhouette, contributing to a different overall impression relative to (2). The undersides of the flakes are illuminated in both views, suggesting that the light in the base is on for both views.

The bottle here is similar to (2), but with a white cork and set against a darker background. The left-hand image seems to be illuminated whilst the right-hand one isn’t (but is presumably lit up from being in a lightbox for the photograph). There is a silver/gold contrast between the silhouetted scenes on the two images, which is again part of the design. The gold flakes are again settled at the base. Picture7Picture6 1 It’s also worth noting that reflections from the lightbox are clearly visible on the glass and haven’t been disclaimed, so technically the reflections are part of the design. It’s much more apparent here relative to (2) and (3) because of the darker backdrop.

Picture8 Picture9This registered design is similar to (4) above, except that the gold flakes have been suspended in the gin against a dark backdrop. Like in (3), this means that the flakes obscure some of the rear silhouette, contributing to the different overall impression relative to (4). The undersides of the flakes are illuminated in both views, suggesting that the light in the base is on for both views. Reflections from the lightbox are again visible on the glass and haven’t been disclaimed, so technically from part of the design. The black and gold elements in this design are particularly eye-catching. Picture10Picture11 Then there are the two Aldi gins that M&S alleges fall within the scope of those registered designs: These images only seem to show non-lit versions of the Aldi products with flakes suspended in the gin. Aldi is probably of the opinion that the two-tone tree/ground silhouettes, the lack of animal silhouettes, the different colour contrasts, the different silhouette perspective (pseudo-3D instead of 2D) and the strikingly white portions of external appearance of the silhouette portions all contribute to providing a different overall impression to the M&S registered designs. Do either of Aldi’s gin products infringe M&S’ registered designs? (M&S doesn’t appear to be relying on unregistered design rights at this point) It’s reasonable to think that at least one of the parties is going to try demonstrating the illumination in each product to argue their case. How the light interplays with the gold flakes and silhouettes forms a significant part of the overall impression, and it is difficult to judge without seeing how they look when lit up. Based on the bottle images at hand, the M&S design silhouettes are comparatively darker than those of the Aldi designs, and this provides a noticeably different colour contrast. Perhaps the ‘white’ wraparound decoration on M&S’ designs isn’t entirely true to what M&S actually wanted to protect? It is worth remembering that it is what is shown in the registered designs that counts for registered design infringement – not what the M&S products look like. Novelty and individual character are also important, as is ‘design freedom’ i.e. what previous designs for light-up bottles with gold flakes in the liquid were available before 15 December 2020 (when M&S’ original EU designs were filed)? If there were few to none, then M&S may successfully argue for a wider degree of design freedom. That is, design infringement is more likely if light-up bottles with gold flakes in them were brand new at the time of filing.

The benefit of hindsight

  If M&S had had a crystal ball in addition to their light-up gin snow-globe bottles, could they have obtained registered design protection which made it harder for Aldi (or anyone else) to attempt to design around their registered designs? Leave out the animal elements of the silhouette portion, disclaim the neck region of the bottle, convey the white colour of the silhouettes a bit more clearly… and the registered designs of the gin bottles are arguably closer to catching the Aldi products. It would have been impractical to protect a large enough number of design variations to cover all eventualities. But then again UK registered designs can be filed at comparatively low cost and some additional designs focussing on the trees / snowy landscape could (with hindsight) have provided some extra options for enforcement. Another important point is that the registered designs relate to the 2020 versions of M&S’ Christmas gin products. The M&S Christmas gin products in the 2021 range look different. Have they filed new design applications to protect the latest versions of their products? If not, then it may weaken M&S’ overall position – see point (3) of our article on seven registered design disasters and how to avoid them. Apart from registered designs, could M&S have patented their light-up bottle? The process is more drawn out and the prospects of grant are less certain, but the scope of protection afforded can be considerably broader than a registered design (and useful for Patent Box tax relief too). At the time of writing, it’s possible that M&S did file a patent application and it just hasn’t published yet.

Success by registered design?

It’s too early to say how M&S will fare in their latest legal dispute with Aldi. The wheels of justice tend to turn relatively slowly and it will take some time for the court action to work its way through the system. In the meantime, M&S might kiss and make up with Aldi under the mistletoe before a trial commences, but after the Colin v Cuthbert caterpillar contest (and all of Aldi’s jibes on Twitter) M&S could be intent on pursuing the claim as a matter of principle. Given that the designs in question are for Christmas gin products, potential damages or an account of profits will probably be limited to sales in the festive season. Is it really worth pursuing a costly legal claim when there is a fairly short window of time for potentially infringing sales? Principles aside, the answer could well be yes. If M&S win, not only might it serve to scare off other possible infringers in the UK, but if M&S ends up dissuading Aldi from selling copycats of future M&S products then drawing a line in the sand now could reap dividends in the long run. It also might also make others think twice about launching similar products in the EU. The premium British innovator versus the budget German disrupter… It will be intriguing to see which side wins out in the end this time.