Not So Festive Spirits – M&S Accuses Aldi Of ‘Copying’ Festive Gin

Aldi has landed in hot water with M&S yet again mere months after what is now known as ‘caterpillar-gate’ (see our blog). As a brief recap, back in April this year, M&S issued legal proceedings against Aldi for alleged infringement of the IP in its Colin the Caterpillar cake.

No decision has yet been reached in the caterpillar cake case and while we aren’t privy to what’s happening behind the scenes, Aldi wasted no time in taking the dispute to social media. Aiming to win over the Court of public opinion, Aldi instigated the #FreeCuthbert movement with tongue-in-cheek posts such as “Marks & Snitches more like” and “Cuthbert has been found GUILTY… ..of being delicious”. Aldi has even featured a forlorn Cuthbert being arrested in its Christmas ad this year.

It is clear from its online mockery that Aldi doesn’t intend on backing down, at least not at this stage, and now a new argument has arisen – this time over gin.

Let the Litigation Be-Gin

Rather than getting into the festive spirits, M&S and Aldi are arguing over them. Both supermarkets sell gins that feature a winter forest graphic, edible gold flakes, and an integrated light feature all within a bell-shaped bottle.

M&S own eight registered designs for its light-up gins which protect the overall design of the gin bottle as a whole. The surface art is also protected separately in two additional registered designs owned by M&S.

To prove that Aldi has infringed its designs, M&S will need to demonstrate that Aldi’s gin bottle gives the same overall impression on consumers as its own gin bottle does. It is immaterial whether Aldi directly copied the designs or came up with them independently (at least for the purposes of proving infringement) because registration gives design owners the exclusive right to use their design (or any design creating the same overall impression). There’s no denying the similarities between the products but it is yet to be seen how Aldi responds in the litigation.

#Round2

Aldi does not seem to be phased by the M&S claim, if there is anything to be said from its Twitter feed, referring to M&S as “Narks and Spencer” and stating that they’re “GINNOCENT” as well as referring back to caterpillar-gate by tweeting that they’ll be “Colin [their] lawyers”.

Is this online confidence well-founded? If Aldi can prove either that its product gives a different overall impression than M&S’ gin bottle and/or that M&S’ design rights in its gin bottles should be invalid, it could be successful.

In assessing the overall impression, the Court considers those elements of the design that have what is known as individual character and takes into account the creative freedom afforded to the designers. Elements that are common to bottle designs will likely be disregarded.

Comment

Bottles do vary in size and shape but commonly have a neck and a wider body to contain liquid. The features that M&S includes within its design, therefore   – and which now appear in the Aldi bottle – (the gold flakes suspended in the gin, lights, and festive design) would certainly appear to deviate from what your average bottle of gin might look like.

In view of this, it would not be surprising if the Court gave considerable weight to the use of such design features by Aldi when assessing the overall impression. We would however question whether gold flakes, suspended in liquid, would be considered to be a part of the protected design – would the flakes be considered to be a part of the product’s appearance, resulting from features such as the lines, contours, colours, shape, texture or materials of the product or its ornamentation?

Turning then to any potential to challenge the validity of the M&S design, if Aldi were to challenge this, it would need to identify a design that predated the M&S’ and deprived it of protection. Put another way, Aldi would have to demonstrate that, because of an earlier design, M&S’ gin bottle was not new (in the sense that no identical designs or designs differing only material details have been made available) and that it did not have an individual character.

It remains to be seen what the Court will decide, but if Aldi’s case is as good as its marketing team, M&S may have a problem.