Infringing gin: Takeaways for designers in the latest M&S v Aldi English ruling

Designers and brand owners will find clarity in HHJ Hacon’s judgment – it serves as a helpful reminder of UK design law where it comes to the interpretation and assessment of infringement of registered designs. We summarise the judgment and provide practical takeaways for designers and brand owners to protect their designs.

Practical takeaways for designers

• Ensure that intended protected features of a design are clearly shown in images in the registration/s.
• Descriptions accompanying images in the registration/s should not be relied on; they may be misleading in resolving ambiguities in the images they accompany.
• An indication of the products in which the design is intended to be incorporated or to which it is intended to be applied should always be included in any registration.
• If there is any aesthetic consideration in selecting a feature, it will not be considered a feature that is solely dictated by technical function.
• Branding may help to differentiate designs in some cases.
• Any designs disclosed by the designer more than 12 months prior to the registration date, or the priority date if there is one, will form part of the design corpus. Designers should be aware of this when disclosures of designs are first made and the intention is to produce a series or range of products with similar designs over an extended period of time.

Background

In autumn 2020, Marks & Spencer (M&S) introduced Christmas-themed gin liqueurs. Gold flakes were suspended in the liqueur to mimic snow, illuminated by an integrated light in the base of the bottle. The bottle depicted a wintery woodland scene of trees, birds and wildlife.

One year later in November 2021, Aldi started selling clementine and blackberry flavour gin liqueurs containing gold flakes in a similarly shaped bottle with an integrated light in the base, a wintery tree scene around the bottle and the wording “The INFUSIONIST Small Batch” on the front.

M&S alleged that Aldi infringed four of M&S’s registered designs by advertising and selling their range of gin liqueurs. HHJ Hacon heard the case in the Intellectual Property Enterprise Court (IPEC).

As a reminder, prior to the UK’s exit from the EU on 31 December 2020, any EU-derived retained domestic legislation such as the Registered Designs Act 1949 (the RDA) should be interpreted in light of EU law as addressed in both EU and English courts. The relevant EU law here is the equivalent provisions in the Community Design Regulation (EC) No. 6/2002 (the Design Regulation) and the EU Directive 98/71/EC. Post-exit day, the RDA should be interpreted in line with any Supreme Court or Court of Appeal rulings, but with regard to EU authorities such as CJEU rulings.

Infringement is considered in Section 7 of the RDA. If a design does not, to the informed user, produce a different overall impression to a pre-existing registered design, that design will infringe the registration.

Validity of the designs was not in issue.

Interpretation of a registered design is an objective assessment

The judge first considered the law around proper interpretation of a registered design.

Protected features must clearly be shown in the registration

Interpretation can be complicated if it is not clear which features are shown by the image of the registered design. There is a delicate balance for designers to strike (as highlighted by Lewison J (as he then was) in Procter & Gamble Co v Reckitt Benckiser (UK) Ltd): if the image is too general, a design may be susceptible to invalidation by prior art; too specific and a design may not confer adequate protection against similar designs.

In this case, M&S’s registered designs consisted of photos showing the gin bottles. While features like the shape of the bottle and the gold flakes were clearly visible in all four registrations, the judge assessed whether the integrated light could be considered a feature. After reviewing what is not relevant to interpretation (see below), it was concluded that two out of four of the registered designs showed the light feature (those showing the bottles illuminated against a dark backdrop).

The following are considerations not relevant to the assessment:

• The circumstances of the proprietor of the design and the intention of the designer.
• For the court to view the design through the eyes of the informed user.
• Products manufactured by the proprietor which are said to be protected by the registered design.

Descriptions may be unhelpful for interpreting an image in the registration

Although the point was only considered obiter, HHJ Hacon raised the issue of whether descriptions accompanying images for registered designs (e.g. “Light Up Gin Bottle” as in the case of M&S’s registered designs) are relevant to the interpretation of UK registered designs.

The position is clear for registered Community designs; descriptions are optional and irrelevant under arts. 36(3)(a) and (6) of the Design Regulation. Indeed, descriptions do not even appear on the public register of Community designs. Under the UK Registered Design Rules 2006 (the Design Rules), descriptions are optional under rule 4(5), but the rules are silent as to whether descriptions are irrelevant. Descriptions do appear in the public register of UK registered designs.

The position is therefore unclear for UK registered designs. The judge warned of a predicament where if descriptions are irrelevant, members of the public may be misled by relying on the description to help them interpret the image in the registration.

Stages of assessing infringement of a registered design

As set out in Cantel Medical (UK) Limited v ARC Medical Design Limited, there are six stages the court should consider when comparing a registered design to an accused design. HHJ Hacon helpfully renumbered his earlier summary:

1. Decide 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 decide (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. Decide the designer’s degree of freedom in developing the design.
4. Assess the outcome of the comparison between the RCD and the contested design, taking into account (a) the sector in question; (b) the designer’s degree of freedom; (c) the overall impressions produced by the designs on the informed user, who will have in mind any earlier design which has been made available to the public; (d) features of the designs which are solely dictated by technical function are to be ignored in the comparison; and (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.

Assessing the relevant sector

For Community designs, art.36(2) of the Design Regulation requires a registered design to indicate the products in which the design is intended to be incorporated or to which it is intended to be applied. For UK registered designs, an indication of the relevant product is similarly required by rule 5(2) of the Design Rules.

Following the Court of Justice’s reasoning in Grupo Promer Mon Graphic SA v OHIM, the indication of the relevant product can be used to point to the relevant sector to which the product belongs, but only “where necessary”. HHJ Hacon deemed it necessary where the image or “design itself” does not identify the relevant sector clearly enough. In this case, M&S’s registered designs did not contain an indication, but rather a Locarno classification. Although the judge clarified that this is not the same as an indication of the relevant product, he did not consider it further in his assessment.

The judge stated that this is an objective assessment, much like the interpretation of a design. He concluded that the relevant sector is “spirits and liqueurs in the UK”, siding with Aldi’s proposition rather than “Christmas liqueur in the UK”, as proposed by M&S. His reasoning was that (i) the relevant sector is liquid products sold in decorated bottles that may contain gold flakes in the liquid; (ii) based on the evidence, the only liquid products that meet these criteria are spirits and liqueurs; and (iii) the winter themed decoration was irrelevant, as it did not restrict sales to wintertime.

Characteristics of the informed user

The informed user has the following characteristics (as set out in Samsung Electronics (UK) Ltd v Apple Inc.):

(i) a user of the product in which the design is intended to be incorporated;
(ii) particularly observant;
(iii) knowledgeable of the design corpus and features usually applicable to designs in the relevant sector;
(iv) interested in the products and uses them with a high degree of attention;
(v) conducting a direct comparison of designs in issue (unless it is impractical or uncommon to do so); and
(vi) not merely perceiving designs as a whole, nor observing minimal differences.

The informed user was characterised in this case as “a member of the UK public who purchases and consumes spirits and liqueurs” and would be able to compare the goods directly to assess infringement.

Degree of design freedom and design constraints

In Whitby Specialist Vehicles Limited v Yorkshire Specialist Vehicles Limited, Arnold J (as he then was) considered that “design freedom may be constrained by (i) the technical function of the product or an element thereof, (ii) the need to incorporate features common to such products and/or (iii) economic considerations”.

M&S provided witness evidence relating to its “Gin Globes Project”. This project led to the registered designs in issue, along with other related products that were put on the market prior to the registered designs. The design constraints for the registered designs were identified as being (i) a sufficiently wide neck of the bottle to inject the gin liqueur containing the gold flakes and (ii) a straight-sided bottle to provide a better surface for the design.

Aldi argued two further design constraints: (iii) gold flakes were the only option for creating a snow effect in the liquid; and (iv) using more than two colours for the design would be too expensive.

HHJ Hacon agreed with constraints (ii)-(iv), but did not find (i) to be a limitation; the designer still had much freedom to choose the shape of the bottle. He also found that there was a large degree of freedom as to the exact design chosen, even if it was within the confines of a ‘wintry’ design.

Aesthetic choices cannot dictate technical function

The effect of art.8(1) of the Design Regulation is that the court is required to ignore features that are solely dictated by technical function when comparing a registered design with an accused design. This does not apply if there is any aesthetic consideration in selecting a feature.

Aldi argued that four features – (i) the gold flakes that mimic snow when the bottle is shaken, (ii) the use of gold flakes, (iii) the upper curved section of the bottle absent of markings, and (iv) the light source in the dimple at the base of the bottle – were solely dictated by technical function. The judge disagreed; all of these features were aesthetic choices. Although gold flakes are the only edible additive that can mimic snow, they do not have a technical function.

Branding may differentiate designs in certain cases

Aldi argued that the words “The INFUSIONIST Small Batch” differentiated the design from the registered designs. HHJ Hacon concluded that only the word “INFUSIONIST” would make an impression on the informed user and could be considered a difference from the registered designs.

Although the judge considered the importance of a trade mark on the accused design, as discussed in Samsung, he did not consider the facts in this case to be comparable. In Samsung it was found that the word SAMSUNG on the accused design was considered to be ornamentation and that if an important feature of the registered Apple design was no ornamentation (i.e. simplicity), the informed user would take the branding into account as a difference. In this case, M&S were not relying on registered designs that lacked ornamentation: indeed, they were elaborately decorated.

Comparing overall impressions

Overall impression is assessed at the priority date, where there is one

It was found that where there is valid claimed priority date, the comparison of the overall impression of the registered design with the accused design should be assessed as of that date. In Dyson Ltd v Vax Ltd (where there was no claimed priority date), it was considered that the date of registration should be used.

The design corpus excludes designs disclosed by the designer during the grace period

What disclosures the design corpus (the ‘body’ of designs available) should include is relevant to the assessment of overall impression.

HHJ Hacon considered whether the grace period applies in the context of infringement (as it does for validity) i.e. does the design corpus include any disclosure of the registered design by the designer in the 12 months preceding the application date or the priority date (where there is one)?

He held that the grace period does apply given both validity and infringement have the same test of overall impression. The design corpus excludes any designs disclosed by the designer during the grace period. This would otherwise defeat the point of protecting designs against competing similar designs that were inspired by the designer’s earlier disclosures.

Only one of M&S’s earlier prior disclosures relied on by Aldi was first marketed outside the grace period (its 2019 Snow Globe) and was therefore considered to be part of the design corpus. After reviewing the design corpus in full, it was concluded that of the bottles with an integrated light or snow effect, none had a similar bottle shape to the registered designs. The prior 2019 Snow Globe had a similar shape and snow effect to the registered designs, but no integrated light.

Comparison of the overall impression of the registered design and accused design

The assessment of infringement in the context of the design corpus was neatly summarised in the judgment:

“There is a continuous spectrum of possibilities but the more strikingly different the registered design is from the design corpus generally and the fewer in the corpus that are close to it in appearance, the more likely it is that an accused design with something of the registered design’s unusual features will produce the same overall impression.”

HHJ Hacon found that the informed user would consider there to be a number of shared features between the registered and accused designs. These would appear significant and striking to the informed user and therefore do not produce a different overall impression:

• The identical shapes of the two bottles when compared against the design corpus.
• The identical shapes of the two stoppers.
• A winter scene over the entirety of the straight portion of the side (consisting of tree silhouettes mostly).
• A snow effect (for two of the registered designs).
• An integrated light (for two of the registered designs).

Aldi therefore infringed M&S’s registered designs.

The English courts have something of a reputation for not being designer friendly – but this decision helps put those rumours to bed. HHJ Hacon’s decision is clearly reasoned, dealing with each of the many issues raised by the parties, but concluding in the end that Aldi’s gin liqueur was too close to M&S’s registered design.

The decision also demonstrates the efficiencies of the IPEC, England’s lower cost IP jurisdiction. The hearing lasted only a day in December 2022, with a judgment just six weeks later in January 2023. Whilst the IPEC is aimed at individuals and SMEs, there is no reason why two large entities like M&S and Aldi cannot use it determine smaller disputes, as this one was.

*A version of this article was first published on the World Trademark Review website.