The case of a copied gin bottle: M&S vs Aldi
6 March 2023
The legal wrangles in which Aldi finds itself has captured the attention of mainstream media of late. The discount retailer has become synonymous with allegations of copying other retailers’ well-loved brands or seasonal products.
In the latest battle between M&S and Aldi, M&S has succeeded in its claim that Aldi’s gin bottles infringe M&S’ UK registered designs.
In a case before Hacon HHJ in the Intellectual Property Enterprise Court (“IPEC”), M&S argued that the bottles used for Aldi’s “The Infusionist” flavoured gin liqueur breached its intellectual property rights.
M&S registered four UK designs for its gin bottles and also registered a design of the wintery scene illustration used around the sides of the bottles, the priority date of the registrations is 15 December 2020. The registered designs contain photos of the gin bottles along with a description “light up gin bottle”.
The test for the court was whether Aldi’s gin bottles produced a “different overall impression” on the informed user, taking into consideration the degree of freedom Aldi would have had in developing the design of its gin bottles. The informed user in this case was a member of the UK public who purchases and consumes spirits and liqueurs, and the court ignored any features that are dictated by technical function.
In considering the degree of design freedom, Hacon HHJ found that there were a number of bottle shapes that Aldi could have used without incurring excessive cost. M&S had provided evidence during proceedings of the various different shapes of gin bottles that are currently in the marketplace. In addition, Hacon HHJ commented that there was almost complete freedom in terms of the wintery illustrations printed on the sides of the bottle.
Although there were some differences between the gin bottles (such as the different wintery scene illustrations, the “Infusionist” branding and the differences between the bottle stoppers), Hacon HHJ held that these were “differences of relatively minor detail”. It was therefore held that the shapes of the bottles were identical and the stopper shapes were identical. In addition, the wintery scene illustrations (which consisted mostly of tree silhouettes), the snow effect and integrated light were common elements that did not produce a different overall impression and would appear as significant similarities to the informed user.
It is understood that Aldi is planning to appeal this decision.
There is often discussion as to whether registered designs truly offer any benefit, this case demonstrates the potential power in a well thought out design registration, particularly in product packaging. In particular, the registered designs allowed M&S to succeed where other “look alike” claims have failed in the past.
The scope of protection in these cases entirely depends on what is shown in the images of the designs that are filed, as design infringement cases compare the alleged infringing product and the registered designs. It is therefore crucial to file accurate images that clearly reflect the product, without any ambiguity.
Obtaining design registration is relatively inexpensive in the UK and can be obtained within a matter of weeks (if publication is not deferred). If you would like to discuss registrations of designs or trade marks please contact [email protected] and [email protected].
The content of this article is for general information only. It is not, and should not be taken as, legal advice. If you require any further information in relation to this article please contact the author in the first instance. Law covered as at March 2023.