A GUIDING LIGHT: M&S v Aldi gin bottle ruling serves up useful reminders on UK registered design law

With all that has been said about the IPEC’s recent ruling in the gin bottle design dispute between Marks & Spencer and Aldi, is there more to this ruling than meets the eye? The CMS Design Law Team’s Stuart Brooks takes a deeper dive, to explore the key take-away learnings and reminders served up by this important ruling.

Judge Hacon sitting in the IPEC offers a detailed analysis on how earlier products on the market impact the comparison process, considers the impact of the “grace period” afforded to design applicants, and raises questions about whether the optional product description which applicants can indicate should have an impact on the comparison of a product with registered designs under UK law.  Following a consequential/ further arguments hearing held on Friday 24 January 2023 which CMS attended,  it seems likely that Aldi will file an appeal against the decision, part of which will directly concern the relevance of the product description field in an infringement context.  This is sure to be an area to watch! 

This illuminating decision will be highly relevant to design law practitioners and businesses alike.  In particular, it highlights several differences between the UKIPO and EUIPO’s design registration practices, and against the backdrop of ongoing UKIPO consultations on possible changes to the UK framework of post-Brexit design rights (see our ‘Spotlight’ series) Judge Hacon is calling on legislators to bring further clarity in this area.  

Summary and rights relied upon

Summary: Judge Hacon held that Aldi’s “Infusionist” light up gin bottle products infringed four of Marks and Spencer Plc’s registered designs (the ‘Registered Designs’), finding that Aldi’s ‘Infusionist’ bottles did not produce a different overall impression than the corresponding Registered Designs.  In reaching this conclusion, Judge Hacon considered several aspects of registered design law, providing commentary which will be welcomed by those considering the best design protection strategy for fast moving consumer goods (FMCG), and those contemplating enforcement of designs in this area.   Further, the judgment warns those searching the register that written descriptions may be a red herring, and the scope of registered design protection will ultimately be determined by visual representations. 

So, what are the key take-away learnings and reminders from this decision, from a broader design registration and enforcement perspective?

Impact of written descriptions on the interpretation of a registered designs. 

This case underlines the importance of having a clear and well thought-through design drawing strategy, which can often be overlooked.  It serves as a reminder that the scope of a registered design must be determined by the court, by reference to the images depicting the design, and without reference to any real-world products to which the design may relate.   Judge Hacon also considered two additional questions related to the interpretation of the design images:

1. Firstly, a key element of M&S’ design was the inclusion of an LED light in the base of the bottle, which illuminates the contents when turned on.  Judge Hacon ruled that only two of the designs (those where photographs were taken in a dark room, Nos. ’82 and ‘84) showed the light feature clearly enough to be a protected feature of the design. 
2. Secondly, the judge considered whether the description provided along with the application (which read “Light Up Gin Bottle”) could assist him in the interpretation of the designs (particularly those where the effect of the light was less clear – Nos. ’78 and ‘80).  Following previous authorities, he concluded that the description could not be used to aid an interpretation of the drawing if the claimed feature was not clearly shown in the images themselves.  However, the judge commented that the descriptions were not necessarily redundant either, for two key reasons.  Firstly,  UK design examination rules (unlike their EU counterparts) do not expressly require the description to be disregarded, and secondly, the descriptions are published in the UK alongside UK design registrations (unlike for EU Designs, where they are not).  Judge Hacon warned that members of the public consulting the register could be misled by such descriptions, and it remains to be seen whether lawmakers might take this comment on board in the context of considering design law practice in the UK in the future.   

Impact of the relevant sector and design freedom

The relevant sector, the freedoms or constraints that the designer will have encountered, and the designs already on the market (i.e. the “design corpus”) all impact the lens through which the court approaches its comparison of the product and earlier design(s). 

The relevant sector is important because it helps the court to establish the relevant design freedoms or constraints, and to zero-in on the type of “informed user” through whose eyes the court must decide if the product infringes or not.  Here, the relevant sector was determined to be all spirits and liqueurs.  M&S’ argument that the relevant sector should be only Christmas liqueurs was deemed too narrow – the fact that M&S had only sold the product in question to a Christmas audience was irrelevant.  The court found that the main features of the designs (the bottle, the presence of gold flakes within the liquid, the adornment of the bottle and the light) were all present within the wider spirits and liqueurs market, and therefore this was the appropriate ‘design sector’ to base the assessment on. 

Several design constraints were identified.  For instance (i) the bottle needs a neck wide enough for the liquid and the gold flakes to be inserted during the bottling process; (ii) a portion of the bottle needed straight edges so that the adornment could be printed or stuck to the bottle; and (iii) a single colour (or smaller number of colours) used for the bottle adornment process would result in lower costs, which would be desirable for consumer-facing goods; and (iv) if gold flakes were added to depict snow, evoking the concept of a snow globe, it would make sense for any scene on the bottle to depict a wintry scene.  Aldi had argued that each of these aspects were in fact features dictated by technical function and that they should therefore not be afforded design protection at all. However, the Judge disagreed, stating that where certain features were inevitable following aesthetic choices made by the designer (i.e. the decision to include gold leaf snow, or a wintry effect meant that the bottle needs to be a certain shape) these post-design constraints could not amount to “features dictated solely by technical function”.  The designer was held to have had a relatively high degree of freedom and notably, the decision to add a light was one example of the wide design freedoms available, since it was a departure from most bottles on the market. 

The design corpus – the impact of earlier designs on the market

As a rule, the more that a design departs from the earlier products on the market, the stronger its scope of protection.  Likewise, a court is more willing to find infringement if a disputed product copies the features of a design which depart from those present in earlier products.  This is because such features will be more striking and visually important to the informed user (discussed further in the final section below).  As a result, earlier products or designs on the market can dramatically decrease the strength of a claimant’s case. This can include products which the claimant itself has put on the market.    This was a key factor leading to the unpopular, but likely inevitable, Supreme Court decision in Trunki.

In this case, M&S had marketed several similar liqueur products prior to making the application, and the question before the court was whether any of them should form part of the earlier “design corpus”.  The Judge decided that all but one of those products should be disregarded, because they were put on the market within the 12-month grace period.  The judge clarified that the grace period runs for the 12 months prior to the application or priority date, and that all designs put onto the market by the claimant during this period (not just those products for similar or corresponding products) must be disregarded when considering both the validity of the design(s) and the fact of infringement. 

The impact was that only one of M&S’ prior products could be included in the design corpus, namely, a snow globe themed gin bottle marketed in 2019.  This had a similar shape to the Registered Designs, but used dark-coloured Christmas tree adornments around the outside, and did not incorporate a light.  Compared to the other products on the market at the relevant time, M&S’ 2019 bottle was the only product in a similar shape to the Registered Designs to contain gold flakes.  Five other bottles in the design corpus used a snow effect of some sort, but none of those had similar shapes to the Registered Designs. Four other products in the design corpus also had an integrated light, but again each bottle shape was different to the Registered Design.  At least two other designs were found to have a similar bottle shape to M&S’ Registered designs, but none used a snow effect or an integrated light.   

Decision – finding infringement

The court compared the M&S designs with the Aldi products, bearing in mind the factors above.  It found similarities in (i) the identical the shape of the products; (ii) the identical bottle stopper shape;  (iii) the use of a wintry scene containing tree silhouettes over the straight portion of the side of each bottle; (iv) the use of a snow effect; and (v) an integrated light. 

The following differences were also deemed relevant:  (i) Aldi’s use of colour and some small changes in the wintry scene which made it ‘busier’; (ii) the use of the written branding “THE INFUSIONIST’ on Aldi’s bottles; (iii) the fact that those two features produced the impression of a ‘front’ to Aldi’s bottles; and (iv) the fact that Aldi’s stopper was in a darker colour, and had a label over it. 

Next, the Judge put himself into the position of the informed user and conducted a direct comparison of the product and Registered Designs.  The informed user is a legal construct which draws together many of the themes above.  It is a user of the product, and while not a technical expert, pays a high level of attention, it is particularly observant and has a knowledge of the design corpus, which includes a knowledge of which of the shared features are common to the relevant sector, and which ones are not.  From the perspective of this user, the Judge held that each of the similarities was significant and particularly striking when combined.  The judge held that the differences were of relatively minor detail, and were not sufficient to avoid a finding that the Aldi bottles create the same overall impression as the registered designs.

Significance of the case – key takeaways

• The decision is a reminder of several key concepts in design law - whilst the judgment does not advance any new legal principles as such, it adds further clarity on how several material matters are assessed by the courts – including prior art, descriptions and illustrations, “relevant design sector”, technical considerations and design freedom.
• Commentary of the law around design constraints recognises that design freedom can be limited not only by technical factors, but also by economic and consumer-driven ones. A distinction was also drawn between features that are truly dictated solely by technical function, and those which were in part technical but did not count as constraints since they were primarily “consequences of aesthetic choices made by the designer”.
• The discussion concerning the relevant ‘design sector’ will also be of interest to those designers whose products may fall within a specific sub-set of a broader product category, as the Court will conduct its own objective assessment of the relevant sector in each case. 
• Following Aldi’s arguments at a consequential/ further arguments hearing on 24 February 2023 an appeal seems likely. If Aldi does appeal, it will be interesting to see whether the Court of Appeal chooses to interpret the English law position on product descriptions in a way which diverges from current EU law. We look forward to another deep dive!