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Design rights and 'lookalikes': Court of Appeal confirms infringement by Aldi of M&S festive gin bottle

Posted on 8 March 2024

The Court of Appeal has dismissed Aldi's appeal against 2023's IPEC judgment, which found that Aldi had infringed four of Marks & Spencer's UK design registrations for its wintry-themed liqueur bottle. In dismissing Aldi's appeal, the Court of Appeal has provided guidance on some aspects of the test for design infringement, including the applicability in infringement proceedings of the 12-month grace period in the UK (and EU) that designers are permitted between disclosing their designs and applying to register them. In particular, the decision confirms that the grace period applies not just when assessing the overall impression of a registered design in the context of its validity, but also when that design is asserted in infringement proceedings.

The decision underscores the value of obtaining registered design protection for novel products, particularly to give an effective tool for rightsholders to tackle 'lookalike' products.

This decision can be can be contrasted with the recent High Court decision (as discussed here) that a trade mark protecting the get-up of Thatchers Cloudy Lemon Cider drink was not infringed by Aldi's lookalike Taurus Cloudy Cider Lemon drinks.

Background and IPEC judgment

M&S issued proceedings in 2021 following Aldi's release of a 'lookalike' clementine and blackberry-flavoured gin-based liqueur, arguing that Aldi had infringed four of its UK design registrations covering M&S's 'Snow Globe' gin. Before applying to register the registered designs, M&S had released a number of other 'iterations' of the same product, as part of a 'Gin Globes Project'. The design registrations were filed on 29 April 2021, and claimed a priority date of 15 December 2020.

Both sets of products depict a wintry forest design, with gold flakes which disperse when the bottle is shaken, as well as an LED light at the base of the bottle which, when lit, illuminates the bottle. A comparison of two of M&S' design registrations and Aldi's gin-based liqueur appears as follows in the IPEC judgment:

M&S & Aldi Gin Bottles

IPEC judgment

In January 2023, the Intellectual Property Enterprise Court (IPEC) found that Aldi's gin liqueur bottle infringed M&S's registrations. Given a number of common features including the snow effect, integrated light and wintry-design, Aldi's product did not "produce a different overall impression" sufficient to avoid infringement.

The differences relied on by Aldi were found to be minor in comparison to the common features, which the Court found to be cumulatively striking.

Pivotal to the IPEC judgment was a finding that all but one of M&S's earlier versions of its 'snow globe' should not form part of the design corpus when assessing infringement, because those designs were disclosed within the twelve month grace period before the registrations' priority date of 15 December 2020. There was one 'snow globe' iteration that pre-dated the grace period, but it did not display all the striking features of the registrations (in particular, it had no light-up feature). We discussed the IPEC judgment here.

Court of Appeal Judgment

Grace period and date of infringement assessment

On appeal, Aldi argued that the grace period applies only to the validity of a design registration, and should be ignored in assessing infringement. If Aldi had succeeded on this point, then all disclosures by M&S during the grace period would have formed part of the design corpus when considering the overall impression created by its design.

The Court of Appeal rejected this, holding that a registered design can only create one overall impression, whether considering validity or infringement. It stated that, if the grace period did not apply in an infringement context, a designer's own disclosures during the grace period, although not necessarily rendering the design registration invalid, would reduce its scope of protection "potentially to nil", meaning the designer would obtain a registration it could not use.

A finding that it applied to both validity and infringement was, however, sufficient to allow the grace period to fulfil its purpose of allowing a designer to test its design (which often includes multiple versions) in the market before deciding whether to invest in a registration (as M&S did).

However, the Court of Appeal also said that not all of a designer's disclosures during the grace period will automatically be excluded from the "prior art" corpus when assessing infringement – only those that do not create a different overall impression to the design that was registered. Therefore, a designer's earlier designs which are are disclosed during the grace period, but which are distinct from the registered design, may form part of the design corpus in an assessment of infringement of the registered design.

Other issues

The Court of Appeal also held (overruling the IPEC judge) that, when considering what a registered design protects, it is permissible for the court to look at the products manufactured to that design, in order to resolve any ambiguity. There was further disagreement between M&S and Aldi over whether the design registrations showed a light inside the bottle; after inspecting the registrations, the Court agreed with M&S that the LED light was indeed a feature of the registrations (shown above).

It also held that, whilst the law makes clear that the product indication should not affect the scope of protection of the design "as such", product indications can in certain circumstances be used to resolve ambiguities in design interpretation when looking at the images alone.


The decision is important in the following respects:

  • It clarifies that, when considering whether a product infringes a design registration, the assessment of the design's overall impression (and thus the breadth of its protection) is to be made as at the design's priority date (where the registration claims priority). Any disclosures of designs between the priority date and the filing date which produce the same overall impression as the registered design are to be ignored.
  • It is permissible when ascertaining what a design registration protects, to look at the products manufactured to that design, in order to resolve ambiguities.

Importantly, the decision means that designers can use the grace period to test their designs in the market, including versions and iterations of those designs, without fear of reducing the scope of protection of the design that they may choose to register, provided they produce the same overall impression.

The outcome in this designs case can be contrasted with the recent Thatchers judgment (see our commentary here), where Aldi successfully defended trade mark infringement and passing off proceedings brought by Thatchers in respect of Aldi's 'lookalike' cloudy lemon cider product. Design registrations can be very useful in protecting novel products, in fields where designer freedom is very wide. The fact that it is often easier to establish design infringement than it is for trade marks (there is no need to show, for example, a likelihood of confusion) or to prove passing off (which requires a misrepresentation to have been made), makes registered designs an effective weapon in the fight against 'lookalikes', as part of a wider brand protection strategy.

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