Background

As part of a line of festive gin-based liqueurs, M&S created and registered five separate designs for gin bottles, with a variety of Christmas-themed features. These included an integrated LED light in the base and gold flakes which created a “snow effect” when the bottle was shaken. Each bottle was also decorated with a wintery design consisting of tree silhouettes.  In November 2021, Aldi began to market its own line of gin liqueurs which also contained gold flakes and were sold in light-up bottles with a festive decoration. M&S sued Aldi for infringement.

Technical Function

Aldi claimed that the following features were solely dictated by technical function and so should be disregarded by the court: the distribution of gold flakes (suspended in the liquid when shaken, and otherwise settled at the bottom); the use of gold flakes to produce the snow effect; a clear, curved upper portion of the bottle; and an integrated light source at the base of the bottle.

The court rejected this claim, finding that there was no requirement that the bottle had to be illuminated and, likewise, although the use of gold flakes resulted from the designer's decision to incorporate a snow effect into the product, it did not follow that the gold flakes were solely dictated by technical function. Therefore, the designer had considerable design freedom, particularly with regard to the shape of the bottle and the design to be printed on it. Aldi had argued that the light had to be put in the base of the bottle, which it was agreed was the only sensible place, however the court said the designer had complete choice over whether or not to include a light in the first place.

The court therefore found that Aldi’s products did not produce a different overall impression on the informed user. M&S's registered designs stood out from the design corpus, leaving more room for differences between the designs while still creating the same overall impression. The bottles had identical shapes, identical shaped stoppers, a winter scene over the entirety of the straight portion of the bottles, consisting mostly of tree silhouettes, and, in the case of two designs, a snow effect and in the case of two designs, an integrated light.

Comment

This decision joins a relatively sparse body of case law on UK registered designs. The court adopted a clear, methodical approach to assessing whether a product infringes a registered design, and reiterated the guiding principles behind the "overall impression" test. The reasons that Aldi did not counterclaim for invalidity of M&S's registered designs are not known. Rather, Aldi sought to argue in the context of design freedom that several features were solely dictated by technical function and should be disregarded for the purposes of infringement, but failed.

Next steps

We are seeing a marked increase in the number of lookalike products cases in the UK courts, with several disputes heading to trial this year. Read our round-up and analysis of the current disputes here. This decision highlights the risks of selling a look-a-like product, if the retailer gets too close to the original branded product.  Designs are powerful rights for a business to assert in the appropriate case.  They form part of a toolkit of intellectual property rights that may be asserted against copycat products (including registered trade marks protecting the name, logo and 3D shape of the product, passing off in the overall get-up of the product and copyright in the packaging). Brand owners should consider taking pre-emptive measures now to put themselves in the best position against copycats as we move into a tough trading market.

Authored by Joel Smith, Clare Matheson, Sheyna Cruz