Articles

Lights out: M&S vs Aldi over snow globe gin range

Picture of Natalie Monaghan

By Natalie Monaghan

15 Feb 2023 | 3 minute read

As the battle of the supermarkets continue, the Intellectual Property Enterprise Court, a division of the High Court, has ruled that Aldi's "INFUSIONIST" gin liqueur containing gold flakes in a light-up bottle infringed Marks and Spencer's (M&S) Light Up Snow Globe gin range, for which M&S have several UK registered designs. The point at issue was whether one of the features of the designs is an integrated light in the base of the bottle.

What happened?

In 2020, M&S introduced a range of gin-based liqueurs, festively decorated and including liqueur containing gold flakes with a LED light in its base that illuminated the bottle contents, when switched on.

M&S registered the following designs for its bottles in April 2021 and claimed a priority date of 15 December 2020:

The registered designs contained the description "Light Up Gin Bottle", but both parties submitted that this was irrelevant to the interpretation of the designs. The Court identified only two of the above designs as clearly showing the integrated light feature, that is, UK82 and UK84.

In November 2021, Aldi started selling its own "INFUSIONIST" range of gin liqueurs containing gold flakes in a light up bottle:

M&S alleged that Aldi's products infringed its above designs. M&S had a further design for a "wintery scene", but since M&S made no respective submissions, the Court did not consider it.

The "groundwork"

A design infringes a registration if it does not produce on the informed user a different overall impression to the registration. However, such a process takes groundwork in that various factors must be established before the overall assessment can take place. These are broadly:

  1. The sector in which the design or the products incorporating the design apply
  2. The informed user
  3. The freedom of the designer

These factors (together with one or two others) create the overall impression produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public (i.e. the “design corpus”).

The Court highlighted that identifying the relevant sector is an objective assessment. Irrespective of M&S submitting that it targeted the Christmas liqueur sector, the Court held the relevant sector as the UK spirit and liqueur sector generally, with the informed user being the consumer (rather than the supermarket buyer) who uses the products at home (no judgement here!).

As regards the freedom of design, M&S provided evidence in relation to the journey of the shape of the “botanics” bottle and identified two design constraints being that:

  • The neck of the bottle had to be sufficiently wide enough to inject the gin liqueur containing edible gold leaf
  • The bottle had to have straight sides in part because they provided a better surface for a design to be created on the glass

Aldi sought to add further design constraints, namely it was only possible to create a snow effect using flakes made of gold and, further, that it was costly to use more than two colours to create the design on the bottle.

The Court accepted that if a snow effect was used, it had to be made of gold flakes and that the bottle opening had to be wide enough to accommodate the liqueur containing the gold flakes. Also, that it was simpler to have a design printed on the side of the bottle if it was straight.

However, the Court considered that the designer had considerable freedom, particularly regarding the bottle shape and the design ultimately printed on it. The Court also considered that there was no design constraint requiring the gin to be illuminated – illumination was a choice.

Technical Function

As stated above, there are one or two additional considerations which contribute to the overall impression.

Aldi sought to put forward arguments that some of the features of the M&S designs were purely "technical" (such functions are not capable of protection by registered design rights). For instance, the distribution and use of gold flakes and putting the integrated light in the bottle base.

The Court disagreed that these were technical functions - the functions were consequences of aesthetic choices made by the designer.

Overall Impression – the key stage

One further factor in the overall impression assessment is the design corpus that existed at the relevant date i.e. 15 December 2019. The design corpus consisted of four bottles with an integrated light but none in the "botanics" shape bottle. Five bottles were identified as having a snow effect of some sort but none with a similar bottle shape. Two of these bottles identified had both a snow effect and an integrated light.

It was only a prior M&S design which was considered similar by having a "botanics" shape bottle and snow effect, but no integrated light. This M&S design was disclosed outside the 12 month grace period.

Comparing the Aldi bottles and M&S designs, the Court identified that the features the informed user would note as being in common were the:

  1. Identical "botanical" shape of the two bottles, compared to the rest of the designs in the market (i.e. the design corpus)
  2. Identical bottle stoppers
  3. Wintery scene decoration
  4. Snow effect
  5. Integrated light

The Court considered that when compared against the rest of the market, those similarities would be striking to the informed user.

Aldi argued that there were differences in the designs, for example: Aldi's decorative design included a colour, the use of the "INFUSIONIST" branding gave the Aldi bottle a "front" angle and that the stoppers had a different label and were darker.

However, the Court considered that, overall, the Aldi product did not produce a different overall impression because of the shared various features. The differences were considered relatively minor and did not affect the lack of difference in the overall impression.

Therefore, the Court held that the Aldi products infringed M&S' registered designs.

According to commentary, an Aldi spokesperson has indicated that it will be appealing this decision, so watch this space.

Obtaining registered design right protection in the UK is relatively straightforward and inexpensive. As there is no examination against prior art, many designs are likely to be invalid and this only comes to light once they are tested in an infringement action. Before any action is taken, we recommend that rightsholders identify the design corpus in order to assess how broad their rights are likely to be on infringement. This is likely to reduce the risk of losing an infringement case and having your own rights invalidated. If the rights are strong, then the registered design is likely to prove a useful tool in preventing others from reproducing similar designs creating the same overall impression, as in this case.

Our team at Foot Anstey can help both at registration stage and in the event that you need to enforce or defend your registered rights.

Natalie Monaghan, Associate

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