Marks & Spencer v Aldi – January Blues Wipe Off Aldi’s Christmas Spirit

The Intellectual Property and Enterprise Court have recently handed down judgement in the infamous Christmas gin bottle dispute between these two popular and well-known supermarkets.

We previously blogged about this case in 2021.

Registered design rules

This case concerned whether Marks & Spencer’s registered design right had been infringed by Aldi, through the production and sale of a light-up Christmas gin bottle by Aldi, similar to that of Marks & Spencer.

For a design to be registerable under the Registered Designs Act 1949, it must have ‘individual character’. A design will be considered to have individual character if the overall impression it creates on the informed user differs from the impression made by a design already available to the public.

Marks & Spencer applied for registration of its design for the gin liqueur bottle in April 2021, claiming priority (and therefore an earlier effective date) for those designs from 15^th December 2020.

A registered design gives its proprietor the exclusive right to manufacture and sell articles made to that design. Put another way, a registered design can be used to prevent the manufacture and sale of an article that does not create a different overall impression on an informed user, to that created by the registered design.

However, rights will not exist in features of the appearance of a product which are there solely for the article’s technical function.

This was one of the main battlegrounds between Aldi and Marks & Spencer.

The trial

One of the main defences deployed by Aldi related to the technical function of the product.

Aldi stated that the following four features of the designs in the suit were solely dictated by technical function and so should be excluded from the monopoly granted by the registered design:

On this point, it was held that:

Therefore, this defence failed and the bottle sold by Aldi was found to infringe on Marks & Spencer’s design right.

The Judge said that:

He stated that the differences between the two bottles that Aldi sought to rely on were ‘relatively minor’ which do not create in the informed user a different overall impression.

Therefore, it was held to be an infringement of all the design rights held by Marks & Spencer.

Comment

Subject to an appeal (which Aldi has promised will be forthcoming), the case will now proceed to a trial on quantum.

This means that Marks & Spencer will make an election as to whether to be paid damages, to compensate it for Aldi’s infringement, or whether it would want to be paid an amount equivalent to the profits made by Aldi, through the sale of the bottles. In either case, the Court will assess what is due to Marks & Spencer.

Given Aldi’s reputation for creating ‘dupes’ of well-known and successful third-party products, see previous blogs here and here. It will be interesting to see whether this reputation is made reference to, so as to try and increase any damages payment made, for perceived flagrancy of infringement and Aldi’s apparent attitude to third-party rights.