Gin-spiration: The latest lessons from M&S vs Aldi - the appeal

Background

A year ago, we commented on IPEC’s ruling on the gin bottle design dispute between Marks & Spencer and Aldi in which Judge Hacon found that the similarities between the bottles were significant and particularly striking when combined - see here.

Following Judge Hacon’s judgment, Aldi were given leave to appeal based on seven grounds, and M&S raised a ground of appeal in their Respondent’s Notice. There was no challenge by Aldi to the claim of priority or to the validity of M&S’ four registered designs.

Last week, the Court of Appeal confirmed that the Judge was entitled to find that the differences between the two bottles were of relatively minor detail and were not sufficient to avoid a finding that the Aldi bottles created the same overall impression as the registered designs. Accordingly, Aldi’s appeal was dismissed, and the finding of registered design infringement was upheld. (Marks and Spencer plc v Aldi Stores Ltd, [2024] EWCA Civ 178).

Grounds of Appeal

Existence of an integrated light feature within the registered designs

This appeal ground focused on Judge Hacon’s ruling at first instance that only two of the pleaded M&S designs (UK82 and UK84) integrated a light feature, and a further two designs did not. Aldi complained that Judge Hacon had failed to explain the rationale for this finding and argued that UK82 and UK84 simply showed a dark-coloured bottle and/or a dark-coloured liquid.

M&S argued that the judge was entitled to find that UK82 and UK84 had dark backgrounds, but that if the Court of Appeal was minded to review Judge Hacon’s findings on this point, they should also review his finding that the other two registrations (UK78 and UK80) did not show a light feature, as no reasons had been given for that finding either.

^{Image: M&S’ pleaded designs UK82, UK84, UK78 and UK80, respectively (Source: UKIPO)}

The Court of Appeal agreed it should review Hacon’s findings in respect of all four designs. The Appeal judges concluded that, having taken the opportunity to review the images online and at an enlarged scale, they agreed with M&S that UK82 and UK84 showed a clear bottle filled with a clear liquid photographed against a dark background. Further, the Appeal judges also concluded that UK78 and UK80 also included an integrated light, a conclusion which was confirmed by an inspection of the examples of M&S’ product, something which was permissible pursuant to Case C-281/10 PepsiCo Inc v Grupo Promer Mon Graphic SA.

Product Description

The Court of Appeal’s conclusion regarding the inclusion of the integrated light also enabled them to provide clarity on a related point. While Arnold LJ accepted it is understood that the ‘indication of product’ on the register cannot define the scope of protection conferred by a registration, Arnold LJ held that the product description provided could be relied upon to resolve an ambiguity as to what is shown in the image, and in that sense to assist in the interpretation of the registered design.

Effect of the grace period

Previously, Judge Hacon had decided that all but one of the M&S products put on the market within the 12-month grace period should be excluded from the relevant “design corpus” due to the effect of the priority date (15 December 2020) and the grace period which started on 15 December 2019.

Aldi’s appeal on this point was based on two grounds: (i) that Judge Hacon was wrong in law to hold that disclosures by the designer of the registered design during the grace period should be disregarded when assessing the “design corpus” for infringement purposes; and (ii) even if disclosures of the same design (or of designs which do not produce a different overall impression) were to be excluded, the judge was wrong to hold that all disclosures made by the designer during the 12-month grace period should also be disregarded.

Arnold LJ referred to the objective of the grace period, namely, to permit a designer to market test new designs for a period of 12 months before committing to filing. He found that this objective would be defeated if disclosures made by the designer of a new design during the grace period were relevant when considering infringement of that same design. Although they would not prejudice the validity of the registered design, they would significantly reduce its scope of protection when judged against the “design corpus”, potentially to nil. In his view, that cannot have been what the legislature intended.

Accordingly, Arnold LJ concluded that the grace period is a limited exception and disclosures of a registered design during the grace period should be disregarded in assessing the “design corpus” for infringement purposes. However, notably, this exception doesn’t apply to other variations of a registered design. The consequence of this is that, if a designer market tests several distinct designs, but only decides to register one, then the designer must accept the risk that the other designs may in some cases affect (or defeat) the scope of protection for the one design they chose to register.

Effect of the Priority date

Judge Hacon held that the overall impression of the registered designs at issue was to be assessed as at their respective priority dates. Aldi argued that this was procedurally unfair because it was common ground between the parties at trial that the date of assessment should be the filing date. Aldi argued it would be illogical to use the priority date, since there could be no infringement as at that date – and the priority date should only be relevant with regard to validity, not infringement. Arnold LJ dismissed Aldi’s argument and concurred with Judge Hacon’s finding that the right time to make the assessment of overall impression was at the priority date. Just like the grace period, the priority date is relevant to both validity and infringement because it determines the “overall impression” produced by the registered design on the informed user, which is the same for both purposes.

Comparison between the Aldi product and the registered designs

Arnold LJ confirmed that since the comparison requires a multi-factorial evaluation, the Appeal judges can only intervene if Judge Hacon had erred in law or in principle. Aldi argued that Judge Hacon had given undue weight to the shape of the bottles and stopper, given the shape of the bottle was protected by a third party registered design and that the design corpus included bottles with similar stoppers.

Arnold LJ held it irrelevant that the bottle shape was protected by a third party design, save for the fact that the design formed part of the design corpus which Judge Hacon took into account. Judge Hacon had made no error of principle, and as such, Arnold LJ concluded that Judge Hacon was fully entitled to the outcome he reached. The Appeal judges concluded that Judge Hacon’s interpretation and application of the law were correct. and that Aldi’s designs contained a combined number of similarities which would appear significant to the informed user.

Key takeaways

Registered design cases nearly always turn on the interpretation of the scope of protection afforded by reference to the drawings. It is helpful that the Court of Appeal has now confirmed that a Court can reference the “indication of product” information to assist with understanding the drawings where there is ambiguity.

The other significant point flowing from this case relates to the grace period. While the Court of Appeal were careful to protect the purpose of a grace period to ensure that any disclosures of the registered design itself during the grace period will not invalidate the design registration, it is clear that the scope of this exception is limited and any disclosures of variations on that design will not fall within the exclusion. Any such variants will therefore form part of the “design corpus” and potentially limit the scope of protection afforded to a designer when it comes to enforcement. The best advice here therefore is to think carefully about which designs to market test, and - to be safe - file a design registration in respect of all of them, to avoid prior disclosures impacting on your ability to pursue future infringers.