M&S vs Aldi Design Infringement
High profile cases with big brands obviously hit the news far more than other lesser known products, and there have been a number of interesting cases over the past few years. But whether you’re a global chain or a smaller one-time inventor, it’s always wise to be careful.
In recent years, we have seen a number of high-profile “lookalike” product wars between supermarkets. Cuthbert and Colin (the caterpillar cakes) dominated the headlines and took social media by storm for many weeks, and numerous other cases have followed.
In this dispute, M&S sued Aldi for registered design infringement in relation to their illuminated gin bottles.
Registered designs protect the outward appearance of a product, and there is infringement of a registered design if someone makes/sells a product that is identical to, or gives “the same overall visual impression” as, that illustrated in the registered design.
M&S had secured a number of registered designs for their “light-up gin bottle”, one of which is illustrated below. The product is a gin bottle containing the drink and edible gold flakes, with a light source at the base of the bottle to illuminate the gold flakes when the bottle is shaken up.
Aldi then launched their own version of the gin (shown beside the M&S design below), also containing gold flakes and including a light source; and M&S sued them for registered design infringement.
Although the two products are not identical, the Intellectual Property Enterprise Court found in their decision last year that Aldi did infringe the M&S registered deign, and that decision was upheld in a recent Court of Appeal decision.
Our thoughts
Although a number of practical and strategic matters arose from the decision, the main take away for us is the demonstration of the true power of registered designs, and the value they can add to a business in protecting the outward visual elements of its products.
In an online world, where purchases are often made on the basis of appearance and recognition alone, it shows how, even if a competitor makes small changes to a ‘copycat’ design to try and ‘get around’ your registered design, they could still be infringing your IP rights and allow you to stop them from eating into your market share.
There is one more thing worth mentioning here, though. In general, we recommend using black and white line drawings for registered designs, to provide the broadest scope of protection. This case, however, is an excellent example of a case where photographs worked better to depict the overall visual impression M&S wanted to protect. Whilst using photographs usually results in a narrower scope of protection, in this case, it provided exactly the protection M&S wanted to achieve; so it is always worth thinking about exactly what it is you want to be able to stop your competitors from doing when deciding how to depict your design in an application for design registration.
If you’ve designed something and it isn’t protected, we’d love to discuss with you what rights you have. Let’s set up a free consultation meeting where we can share our thoughts with you.
