The Battle of the Supermarkets Vol. 2 – GINgle Bells, GINgle Bells, GIN All the Way

It is beGINning to look a lot like a legal disputes saga between supermarkets in the UK. We have recently covered an ongoing dispute between Lidl and Tesco (see here), which relates to an alleged trade mark infringement. This time, Marks & Spencer (M&S) are suing the largest Europe’s discount grocery chain Aldi for copying their registered designs of the light-up Christmas gin bottles. This is the second legal case in recent times brought by M&S against Aldi, with the first one involving the famous Colin the Caterpillar cake, which has since been settled. Notably, the case at hand in relation to gin bottles demonstrates the benefits of registering designs in the UK, especially if such design is unique and has a significant value to the brand, and the brand would like to protect it against any copycats.

The Background
M&S released their special gin bottles for Christmas in 2020, and have meticulously protected their rights in this unique light up bottle by registering a series of designs aimed at different aspects of their product. The registered designs include various elements of the Christmas gin to ensure thorough protection, such as the bell shape of the bottle, an integrated light feature, the gold leaf flakes and the winter forest graphic (see below).

Aldi in turn put forward their own branded festive gin ‘The Infusionist’ in December 2021, which, according to M&S, is ‘strikingly similar’ to that of M&S. Indeed, Aldi’s version entails a bell-shaped bottle, a light up feature, some edible snowflakes and winter forest graphics too (see below).

The Claim
M&S stated that ‘The Infusionist’ gin of Aldi infringe their registered designs. This is because the Aldi’s version of the festive gin does not give a different overall impression to the informed user, who is

“a member of the general public who is interested in purchasing liqueur during the Christmas period”.

M&S also submitted that the designer of the Christmas gin has a considerable degree of freedom when designing the bottle. In other words, Aldi could have produced gin in a differently shaped bottle such as a Christmas tree with features of sound, but instead opted for a bottle entailing the same features as of M&S version. The degree of design freedom is significant in registered design infringement cases, since the less design freedom a designer has, the more elements of the design can be similar to a prior registered design, and vice versa.

Furthermore, it was noted that none of the features of M&S gin design are dictated by the technical function, hinting that the registered designs should subsist in all parts of the M&S Christmas liquor bottle.

M&S seeks an injunction against Aldi in order to restrain the design infringement, and requests that Aldi surrenders or destroys the infringing items as well as pays the damages and costs.

Overall Impression
As the case illustrates, one of the main advantages of owning a registered design in the UK is that there is no need for M&S to show that Aldi directly or indirectly copied the designs, since registered designs confer an exclusive right to use them, or any design which creates the same overall impression, to their proprietor. Thus, to be successful in its claim, M&S only has to prove that the gin produced by its rival Aldi creates the same overall impression, which is the threshold for demonstrating a registered design infringement.

Interestingly, in order to show that Aldi’s gin is a copy of M&S design, M&S put forward evidence by way of press coverage and social media posts by the general public, which includes comparisons of the products concerned and their price ranges. The language used by media include statements that the Aldi’s gin is a ‘dupe’, ‘similar’, ‘same size’, ‘cheaper than’, ‘just like’, ‘lookalike’ and an ‘alternative’ to the M&S branded version. According to M&S, since authors of the articles likely have a higher degree of attention than the informed user, such language used emphasises that the products produce the same overall impression. Further, M&S referred to a number of social media posts by the general public with side-by-side pictures of the two gin bottles highlighting the striking similarities.

Let the Design Registration Season BeGIN?
Will this case mark a start of a registered design era? The decision in the dispute between M&S and Aldi will provide further guidance on the court’s approach to assessment of overall impression. In particular, it will be useful to see which features of the registered design the court will consider to be key in establishing (dis)similarities, and which aspects of the design will be disregarded. Indeed, if M&S succeeds in this dispute, it is likely that more brands will consider seeking IP protection by way of registered design to protect their rights.

If you have a unique design that you would like to protect this is a helpful reminder to consider registered design proteciton to preserve your position against any copycats (or are these transformed into copyreindeers during the festive season?).

By Aurelija Grubytė and Simon Casinader