In a judgment which will be welcomed by those seeking to combat ‘lookalike’ products, the Court of Appeal has upheld a decision of the Intellectual Property Enterprise Court that Aldi’s gin-based flavoured liqueur product infringed the registered design rights of Marks & Spencer.
Background
Marks & Spencer owns four registered designs for gin-based flavoured liqueurs sold in festively-decorated bottles containing edible gold flakes which become suspended in the liquid when the bottle is shaken (producing an appearance of a snow globe). There is an LED at the base of the bottle, which illuminates the contents of the bottle when turned on.
Aldi later launched a rival product in a similarly decorated bottle, which also contained gold flakes and an LED.
The IPEC held that Aldi’s products did not create a different overall impression on the informed user, being a UK purchaser and consumer of spirits and liqueurs, to each of Marks & Spencer’s designs and, therefore, infringed the registered design rights of Marks & Spencer.
The Court of Appeal decision
Aldi put forward seven different grounds of appeal. The mains issues were as follows:
1. Interpretation of the registered designs
Marks & Spencer said that two of their four registered designs depicted the bottle against a dark background. Aldi, however, argued that they showed a dark-coloured bottle and/or a dark-coloured liquid. The Court of Appeal concluded that Marks & Spencer was correct and that the two registrations showed a clear liquid against a dark background. This conclusion was supported by an inspection of the M&S products and, usually for practitioners, it was confirmed that it is permissible to use the products to confirm the conclusions already drawn from the designs.
In the registered design registrations of Marks & Spencer, “Light Up Gin Bottle” appears under the heading “Indication of Product”. It was held that this could be relied on to resolve any ambiguity as to what is shown in the image and assist in the interpretation of the design.
2. Disregarding earlier designs of the proprietor when assessing the ‘design corpus’
The ‘design corpus’, being the other designs for products of that type in existence at the time, impacts the scope of protection of a registered design. The more novel a design is, the greater the differences which will fail to produce a different overall impression on the informed user and, therefore, the greater the protection is.
Proprietors are given a grace period in which they can publicly disclose their design without such disclosure being considered relevant to the novelty or individual character of the design when registered, provided the application for registration is made within 12 months from the date of disclosure.
Aldi argued that a disclosure made by the proprietor during the grace period should not be disregarded when considering infringement as, unlike with registration, there is nothing in the legislation which sets out that they should be disregarded. The Court of Appeal disagreed as it could have the impact of reducing the scope of protection, potentially to nil, and that cannot be what the legislature intended.
Aldi then argued that, alternatively, the IPEC was wrong to hold that all disclosures by the proprietor during the grace period are to be disregarded. Aldi succeeded on this point to the extent that it was held that the only disclosures of the proprietor to be disregarded are those earlier designs of the proprietor which give the same overall impression as the registered design.
3. Time of assessment of the overall impression in infringement matters
In most infringement matters, this will be the filing date of the registered design. However, in this case, Marks & Spencer claimed an earlier priority date on the basis of an earlier registration filed for the same design in another convention country.
Aldi argued that it was procedurally unfair for the overall impression to be considered at the priority date because it was common ground between the parties at trial that the date of assessment was the filing date and, furthermore, the IPEC was wrong in law as it would be illogical to assess infringement at a time when there could be no infringement (as the registered design only has effect from the filing date). The Court of Appeal disagreed and held that the priority date was the correct date to assess the overall impression.
Comment
Following a recent trend of discount retailers succeeding in defending trade mark and copyright infringement matters, such as Aldi in its high-profile cider dispute with Thatchers (read more here), this decision may result in brand owners shifting towards registered design rights in their attempt to prevent ‘lookalike’ products being sold.
For those applying for a registered design, this decision confirms the importance of carefully considering what to include under the heading “Indication of Product” as it may be relied upon when later interpreting the design.
This is not an unexpected decision. Aldi needed to establish that the IPEC made an error of law or came to a decision which no reasonable tribunal could have reached, which seemed unlikely not least due to the striking similarity between the registered designs of Marks & Spencer and Aldi’s products.
