In M&S v Aldi, the Intellectual Property Enterprise Court (IPEC) found registered design infringement in M&S' favour, in respect of four of its UK design registrations for a wintry-themed liqueur bottle. The decision provides a number of useful reminders including as to the value of registering novel designs. It also points to important issues to consider in relation to prior art designs and the use of the 12-month grace period in the UK (and EU) that allows designers to test their designs in the market.
This case is the latest in a line of disputes concerning lookalike products, this time in relation to a Christmas-themed gin-based liqueur. M&S' version was released during autumn 2020. The design of the bottle depicts 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. M&S had previously released other 'iterations' of the same product as part of a 'Gin Globes Project'. The first iteration, the '2019 Snow Globe', also contained gold flakes which disperse when shaken, but had no light-up feature.
M&S issued court proceedings against Aldi following its release in November 2021 of a clementine and blackberry-flavoured gin-based liqueur. Its bottle similarly contained gold flakes which dispersed when shaken in a light-up bottle. A comparison of two of M&S' UK design registrations (M&S Registrations) and Aldi's gin-based liqueur appears as follows in the judgment:
The IPEC found that Aldi's gin liqueur bottle infringed the M&S Registrations, owing to the presence of a number of common features including the snow effect, integrated light and wintry-design.
Aldi had relied on a number of differences, including the prescence of the "INFUSIONIST" branding on its bottle. However, the Court held that the differentiating features would not be sufficient to find that Aldi's bottle produced a different overall impression to the M&S Registrations. They were minor in comparison to the common features, which the Court found to be cumulatively striking.
The case highlights a number of important points to consider when developing a strategy to protect and register designs, as well as enforcing design rights once registered:
The role of branding in design infringement
The Court agreed that the word "INFUSIONIST" on the Aldi Bottle represented a point of difference from the M&S Registrations, which bear no writing. However, whether or not the writing in question happens to be a trade mark was irrelevant to the comparison. The presence of branding on a contested product may play a more enhanced role in the comparison if lack of ornamentation is claimed as a positive design feature (as had been claimed by Apple in Samsung v Apple), but it is still not decisive. Accordingly, simply attaching a trade mark to an otherwise infringing product will not preclude a finding of design infringement – the mark or branding is simply one of the many features to be compared.
The benefit of design rights, in particular for novel products
It has long been the case that the overall impression of designs that are markedly different from the prior art will produce a more significant overall impression than those designs which are "surrounded by kindred prior art" (as per Judge Fysh in Woodhouse v Architectural Lighting  RPC 1). This was the case here, given that the combination of features of M&S' Registrations (which ultimately led to a finding of infringement) were particularly striking. Design protection can therefore be of particular assistance for novel products, or products with novel features.
Another reason why obtaining registered design protection can be particularly helpful when protecting innovative designs lies in the test for infringement. Design law allows the court to make an assessment based on a visual comparison of the registration as against the contested product. This can be particularly helpful where a passing off case might not succeed (because misrepresentation cannot be made out, or where consumer confusion / a link in the minds of the consumer may not necessarily arise). Passing off cases have not succeeded in the past, where design rights were not available (see, for example, Moroccanoil v Aldi). In addition, the informed user of design law is more observant than the average consumer of trade mark law, and shows a relatively high degree of attention, in particular to features to which practical significance is attributed. This can, again, be helpful for designs with striking features.
The grace period and the role of prior art
A period of twelve months is afforded to designers in the UK and EU, from the date of disclosure of their design, to protect that design on a longer-term basis by way of a design registration. This is a helpful way of testing out designs (or versions of designs) in the marketplace, before committing to registering those designs which carry longevity or prove popular with customers. Importantly, the grace period ensures that a designer's own disclosures do not prevent the later design registration from being 'new' and possessing 'individual character' (being the requirements for a valid design in the UK and EU).
The grace period also plays an important role in an infringement context. Here, of the four designs that were part of the prior art considered closest to the Registrations, three were disclosures of previous 'globe' liqueur bottles put on the market by M&S itself. Importantly, two of those 'globes' (the 'glitter globe' and the 2020 'snow globe') fell within the twelve-month grace period prior to the priority date of M&S Registrations. These two designs were to be excluded when considering the design corpus for the purposes of the infringement assessment.
The grace period is the time to test designs in the marketplace
The IPEC took the view that all of a designer's disclosures made within the grace period will be irrelevant to the assessment of novelty and individual character. This therefore includes not just the exact design registered, but also any similar designs which are brought to market but in respect of which, for lack of commercial success or whatever other reason, registered protection was not pursued.
This suggests designers should therefore not be shy about trying out different versions of their designs on the marketplace before settling on a more limited number to protect with a design registration. However, it is important to carefully diarise the grace period expiry, and to keep detailed records of dates and locations of disclosures (noting that simultaneous disclosures may be appropriate if it is intended to rely on unregistered design protection in both the UK and EU). Calculating the date of grace period expiry can be complicated if prototypes with different features have been released to the market: notably, in this case, M&S' 2019 Snow Globe (which included a botanics shape bottle and a snow effect, but no integrated light) fell outside of the grace period of M&S' Registrations, and therefore formed part of the design corpus relevant to the assessment of infringement. Had the 2019 Snow Globe been found to have incorporated all the striking features of the Registrations, the outcome of this case is likely to have been very different.