Design Rights and Bright Lights: M&S wins appeal over Aldi's bottle design

Background

The value of strategic registered designs in the battle against supermarket lookalikes, in cases where registered trade mark or passing off actions may fail for lack of consumer confusion, was recently highlighted in the English Court of Appeal in the case of M&S v Aldi concerning festive gin liqueurs.

The dispute centred around the introduction of Christmas-themed gin liqueurs by Marks & Spencer (M&S) in the autumn of 2020. The bottles were festively decorated, and the liqueur contained gold flakes suspended in the liqueur to mimic snow. In the base of the bottle, there was an LED light which, when turned on, illuminated the contents of the bottle.

In November 2021, Aldi started selling similar gin liqueur containing gold flakes in a light-up bottle in two flavours – clementine and blackberry. M&S alleged that the advertising and sale of these Aldi products infringed four of M&S’s registered designs, shown below. They were filed on 29 April 2021 claiming a priority date of 15 December 2020. There was no challenge by Aldi to the claim to priority or to the validity of the registered designs.

M&S was successful in its claim of registered design infringement in the Intellectual Property Enterprise Court (IPEC). Aldi’s appeal to the Court of Appeal was unsuccessful on the key point of infringement, but the case provides brand owners with some additional helpful guidance and a reminder to brand owners as to the advantages of seeking to register designs.

Registered Design Protection

In the UK, a design (or part of a design) may be protected by a registered design if it is new and has individual character. A design is new if no identical design, or no design whose features differ only in immaterial details, has been made available to the public before the filing or priority date. Individual character means that the overall impression the design produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public before the filing or priority date.

Protected Features

UK registered designs may be represented using a line drawing, a graphic rendering or a photograph (but not a combination of different formats for the same design). It is up to an applicant as to what features to include in the application and the choice of media best suited to encapsulate the design features. There is a fine balance for designers to strike. If the image is too specific, this can result in a lack of satisfactory protection against similar designs, whereas if an image is too general, the design may potentially be invalidated by prior art.

In the M&S case, although the shape of the bottle and the gold flakes were clearly visible in all four registrations, the main question was whether the integrated light could be considered a protected feature. The trial judge found that only two out of four of the registered designs sufficiently showed the light and could therefore be a protected feature. He found that products manufactured by the proprietor to which the design has been applied are “irrelevant to interpretation of the design”, but the Court of Appeal said this is incorrect. It concluded that it is certainly permissible to use the products “to confirm the conclusions already drawn” from the designs. The Court of Appeal reviewed the judge’s assessment of the registered designs and found that all the registered designs showed the LED light. The Court also concluded that product indications can be used to resolve any ambiguity as to what is shown in an image.

Assessing Infringement of a Registered Design

Section 7(1) of the Registered Design Act 1949 gives the proprietor of a registered design “the exclusive right to use the design and any design which does not produce on the informed user a different overall impression”. Thus, the issue on infringement is whether the designs of Aldi’s products produced on the informed user a different overall impression to each of the registered designs, considered separately.

The Court of Appeal confirmed that the judge had followed the correct approach. This consists of four stages:

1. Identify the sector to which the products in which the designs are intended to be incorporated or to which they are intended to be applied belong.
2. Identify the informed user, and having done so determine (a) the degree of the informed user’s awareness of the prior art and (b) the level of attention paid by the informed user in the comparison, direct if possible, of the designs.
3. Determine the designer’s degree of freedom in developing their design.
4. Assess the outcome of the comparison between the registered design and the contested design, taking into account (a) the sector in question, (b) the designer’s degree of freedom and (c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier designs which have been made available to the public (the “design corpus”), but ignoring (d) features of the designs which are solely dictated by technical function. It should be borne in mind that (e) the informed user may in some cases discriminate between elements of the respective designs, attaching different degrees of importance to similarities or differences. This can depend on the practical significance of the relevant part of the product, the extent to which it would be seen in use, or on other matters.

The Grace Period applies to infringement as well as validity

An important aspect of registered design protection in the UK (and in the EU) is that disclosures made by the designer, or their successor in title, during the period of 12 months immediately preceding the filing of an application for the design will not destroy novelty. This enables designers to assess the commercial viability of designs for up to 12 months before filing for registered design protection. The relevance of this grace period in infringement proceedings was an aspect on which the Court of Appeal gave clarification in this case.

On appeal, Aldi argued that the judge at first instance was wrong to hold that disclosures by the designer of the registered design during the grace period are to be disregarded when assessing infringement, as opposed to validity. They should form part of the design corpus, which needs to be taken into account when assessing infringement.  The Court of Appeal rejected this argument. It concluded that the purpose of the grace period would be substantially defeated if disclosures by the designer during the grace period were taken into account when considering infringement.  Although they would not prejudice the validity of the registered design, they would reduce its scope of protection, potentially to nil. The Court concluded that this cannot have been what the legislature intended.

The Grace Period does not extend to all designs disclosed by the designer

Aldi went on to say that, even if disclosures of the same design (or designs which do not produce a different overall impression) are to be disregarded, the judge was wrong to hold that all disclosures by the designer are to be disregarded.

The Court of Appeal accepted this, finding that the grace period protects the designer from adverse consequences of any disclosure they make of (a) the registered design or (b) any design which does not produce a different overall impression to that of the registered design but not all disclosures.

The grace period is a limited exception to the proposition that the overall impression created by the registered design should be assessed as at the filing date or priority date. As such, it should not be extended beyond its purpose. If designers test market a number of distinct designs, but only decide to register one, then they must accept the risk that the other designs may in some cases (where they give a different overall impression from the registered design in issue) affect the scope of protection of the registered design.

The Court of Appeal also confirmed that the overall impression of the registered designs in issue should be assessed as at the priority date (if there is one) rather than the filing date.

Conclusions

• The Court of Appeal’s decision affirms the importance of registered designs as a valuable tool against copycat products in an environment where registered trade mark and passing off actions may fail for lack of consumer confusion. The comparison of the overall impression of the registered design and the accused design is the key factor in infringement assessment. The judge had concluded that the differences which Aldi highlighted were differences of relatively minor detail which did not affect the lack of difference in the overall impressions produced by the Aldi bottles on the one hand and each of the registered designs on the other. The Court of Appeal saw no reason to overturn this conclusion.
• The huge benefit of registered designs is that they provide a monopoly right; it is not necessary to show confusion, copying, or intention in order to succeed on infringement.
• Registered designs are also relatively inexpensive and quick to obtain (they are not subject to detailed examination by the UK Intellectual Property Office)
• Images in design registrations must depict key features without ambiguity. An ‘indication of product’ can help resolve ambiguities, but clear images of the design features are paramount.
• Design features with any aesthetic considerations, even within technical constraints, will not be considered a feature solely dictated by technical function.
• The impact of branding on differentiating designs will depend on the specific facts of the case. In this case the branding used by Aldi was noted but was seen as a relatively minor difference.
• The 12-month grace period protects registered designs from disclosures by the designer that are the same as or produce the same overall impression as the registered design but may not offer the same protection where disclosures give a different overall impression