The Big Gin Debate

Posted Tuesday 21st February 2023

In the latest intellectual property dispute between retail giants Marks and Spencer (M&S) and Aldi, the High Court has ruled in favour of M&S after finding that Aldi had imitated its Christmas themed gin bottles. The decision comes only a year after the infamous Colin and Cuthbert Caterpillar dispute took social media by storm and was settled by the retailers. The case serves as a good reminder to brands and legal practitioners as to how a Court will approach similarity of designs in registered design right cases.

Registered designs may be infringed if another design fails to produce a different overall impression from the registered design, on an informed user. This means that the disputed design needs to have individual character and in assessing this, the court will consider the degree of freedom to create the design. For example, a functional item will have less potential to be creative over a decorative item and therefore fewer differences are likely to be required for a functional design to qualify as having individual character.

M&S sold a gold flake infused gin liqueur which included an LED light illuminating the contents of the bottle. The design on the bottle incorporated several of its registered designs. Aldi then began selling similar gin bottles. M&S brought an action for registered design infringement against Aldi.

In determining the issue, the court applied the well known guidelines set out in Cantel Medical (UK) Limited v ARC Medical Design Limited [2018] EWHC 345, namely:

  1. Determine the sector which the products incorporating the design belongs to;
  2. Identify the informed user and their degree of awareness;
  3. Decide the designer’s degree of freedom in developing the registered design; and
  4. Compare the disputed design against the registered design in light of the above and the overall impression created by the designs.

Applying the above to the facts, the court found that the sector was spirits and liqueurs in the UK and the informed user was a member of the UK public, with a relatively high degree of attention, who purchases and consumes spirits and liqueurs.

The designer’s degree of freedom was substantial, especially in relation to the shape of the bottle and the design printed onto it. However, the positioning of the LED light (which would illuminate the design) was deemed a crucial consideration for the designer as its placement needed to be decided before the rest of the bottle could be designed. It appeared to the judge that all aspects of the bottle were “aesthetic choices” and no features were dictated by technical function.

In light of the above, the court then considered the overall impression created upon the informed user. The elements considered by the court were the similar shape of the bottles, the bottle stoppers, the Christmas themed silhouettes and the LED light. The similar shapes of the bottles were of particular importance to Judge Hacon, as he noted that there were not any similar shaped products sold or advertised by either Aldi or M&S. This supported M&S’ argument that any similar design would not create an overall different impression.

Aldi, on the other hand, relied upon the differences between the bottles’ silhouettes printed onto the bottle, the inclusion of additional Aldi branding and the different coloured stoppers. However, Judge Hacon was not convinced that these differences were significant enough to create a different overall impression. The court concluded that Aldi’s bottles infringed M&S’ registered designs.

This decision is an important one as it not only serves as a reminder that in general terms minor changes to a registered design will not protect designers from infringement actions, but also the strength of protection which a registered design right affords a brand, if the features of a design are properly captured within the registration. Given that they are often one of the most affordable registered IP rights, they should be firmly on a brand’s radar when considering IP protection.

This article is for reference purposes only. It does not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking or deciding not to take any action.

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