Infringing gin part II: Court of Appeal victory for M&S against Aldi’s copycat design

In the Christmas gin bottle case concerning Marks & Spencer and Aldi, the Court of Appeal has upheld the designer-friendly first instance decision in which Aldi was found to have infringed Marks & Spencer’s bottle design – our previous discussion of the key takeaways for designers from the first instance judgment can be found here.

Interpretation of the registered designs

On appeal, Aldi argued that the first instance judge was wrong to conclude that two of the registrations were “images created against a dark background” – in fact, the images showed a dark-coloured bottle and/or a dark coloured liquid. Arnold LJ (with whom Lewison and Moylan LJJ agreed) concluded that the background was clearly dark (rather than the bottle/liquid) and that all registrations showed the presence of a light in the base of the bottle. On this basis, he agreed with the trial judge’s assessment of infringement – the similarities between Aldi’s product designs and M&S’ registered designs were significant against the backdrop of the design corpus and therefore did not produce a different overall impression on the informed user. The images of M&S’ registered designs and Aldi’s products can be found on pages 3 and 4 of the judgment here.

In his assessment, Arnold LJ noted the importance of considering registrations independently from one another. He did however state that it is permissible to consider images showing different perspectives of the same design together, provided they fall under the same registration. He went on to examine the actual M&S goods that were marketed, citing the ECJ case PepsiCo v Groupo Promer Mon Graphic – that in assessing the overall impression of designs, the actual corresponding products can “confirm the conclusions already drawn”.

Between the first instance decision and the appeal, the UKIPO had updated its online registrations to re-label the design “description” as an “indication of product”. As such, Arnold LJ considered whether an “indication of product” can resolve ambiguities when interpreting a design. He held that the indication is for classification purposes and went on to conclude that it can therefore resolve ambiguities. In this case, the indication “light up gin bottle” reinforced that the design did contain an integrated light.

Disclosures of the registered design during the grace period relevant to infringement

Aldi argued that the trial judge was wrong to ignore in assessing infringement disclosures by the registered design owner during the 12-month grace period, and that even if disclosures of the same design are ignored, the judge should not ignore all disclosures by the designer.

Arnold LJ disagreed, applying a purposive approach; this would surely reduce the scope of protection conferred by the grace period. Although there is no explicit legislation to exclude such disclosures from the infringement analysis (as there is for validity), it would be contrary to the purpose of the grace period.

The Court of Appeal reasoned in Dyson v Vax that it does not matter whether validity or infringement is in issue – the design corpus must be considered in the overall impression on the informed user of a registered design. The scope of protection of a registered design is altered by the design corpus and the grace period exists to protect registered designs from disclosures that produce the same overall impression, which would effectively reduce the scope of protection to zero.

Arnold LJ made an important point that designers should be aware of: if a number of designs are tested on the market and only one is registered, there is a risk that any designs not ultimately registered that give a different overall impression may fall within the design corpus and not within the grace period exception, thus reducing the scope of protection of a registered design.

Relevant date for the assessment of overall impression

Even though both parties had agreed that the overall impression should be assessed as at the filing date of the registered designs, the first instance judge found that the priority date was the relevant date for assessment. On whether this amounted to procedural unfairness, Arnold LJ held that it did not – it had not affected the evidence or arguments at trial.

Arnold LJ agreed that the priority date should be the relevant date. It was irrelevant that the overall impression assessment would take place at a point in time when infringement could not conceivably occur (i.e. before the registered design was filed). The key point is that claiming priority affects the overall impression assessment, which applies equally to both validity and infringement.

Reconsidering the design corpus

Aldi argued that if successful on other grounds, the design corpus would expand to include other designs (including M&S designs marketed during the grace period that give a different overall impression). This would warrant a revised assessment of overall impression and infringement.

Comparing Aldi product designs vs the registered designs

On comparing Aldi’s product designs against M&S’ registered designs, the Court upheld the comparison at first instance. Aldi tried to argue that undue weight had been given to the bottle and stopper shape, especially given both featured in the design corpus. Arnold LJ held it was acceptable for the judge to have given weight to the shape of the bottle and the stopper in his analysis of overall impression – both features were part of the design corpus and therefore the overall impression assessment for the Aldi product designs and the M&S’ registered designs had already taken this into account.

Commentary

Brands looking to eliminate copycat products will be reassured by this judgment, which is the first since harmonisation in finding a registered design both valid and infringed. Historically, the Court of Appeal has a track record of finding designs valid and not infringed – suggesting the informed user has been closer to the skilled person in patent law (i.e. paying close enough attention to minor differences) to find a design valid but not infringed. This judgment suggests a shift in favour of design owners. It provides clear guidance on UK design law and is a valuable reminder that, alongside trade marks, designs can be an effective method of protection for products.

The judgment can be read here.