News & Insights

Registered Designs: M&S v Aldi

The Intellectual Property Enterprise Court has recently ruled that Aldi infringed four registered designs owned by Marks & Spencer (M&S) with certain gin liqueur products they released before Christmas.

The M&S and Aldi saga now continues with a new dispute, this time around registered designs (if you also followed the “Colin the Caterpillar” row, you might be interested to know that “Cuthbert” was eventually “freed” following a confidential settlement between the parties).

Registered design rights help to protect the appearance of a product such as its shape or pattern. In order to successfully register one, the design must be new and have an “individual character”. A registration allows for 25 years’ protection with that design and an exclusive right to make products using it.

M&S holds registered designs for their gin-based liqueur bottles which were introduced in 2020 for the Christmas market, containing gold flakes, an LED light and decorated with festive designs. In November 2021, Aldi released certain gin liqueurs also containing gold flakes in a festively decorated light-up bottle. So, M&S issued proceedings against Aldi alleging that they had infringed their registered designs by advertising and selling their gin products.

A judgment has recently been issued in favour of M&S. Without going into the technicalities of the legal principles, the judge mainly considered whether an informed user would have a different impression of the Aldi products to that produced by the M&S registered designs. In comparing the overall impressions of the designs, the following common features were identified:

  • The shape of the bottles;
  • The shape of the bottles’ stoppers;
  • A wintery scene covering the entirety of the straight portion of the bottles’ sides (mostly of tree silhouettes);
  • A snow effect for two of the registered designs; and
  • An integrated light for two of the registered designs.

It was held that each of those similarities would appear significant to the informed user and cumulatively they would be striking. Although some differences were also found (some of which around branding), the judge still ruled in favour of M&S on the basis that Aldi’s bottles did not produce a different overall impression on an informed user and the differences were of minor details.

In order to avoid these sorts of legal disputes, it is important to conduct a full search of registered designs for similar products and their most notable features to ensure you are not at risk of infringement.

If you have any questions following this article, you can contact [email protected].