There continues to be many widely publicised examples of retailers taking legal action to protect their much-loved products against lookalike products circulating in the market and IP lawyers have been eagerly anticipating the judgment on Aldi’s attempt to overturn the judgment made last year. The result? M&S were victorious as Aldi’s appeal was dismissed by the Court of Appeal.
What was the issue?
In Autumn 2020 M&S launched a revised ‘Snow Globe’ gin range protected by 5 registered designs to cover:
1. The shape and contour of the bottle and cork stopper
2. The illumination of the bottle
3. The gold flakes suspended in the gin
4. The bottle’s winter forest silhouette design
In November 2021 Aldi launched its ‘Infusionist’ gin liqueur which also incorporated edible gold flakes, a light up bottle and a wintery tree silhouette. M&S commended proceedings for registered design infringement and 2023 the Intellectual Property Enterprise Court ruled that the sale and advertisement of Aldi’s ‘Infusionist’ range of flavoured gins infringed M&S’ ‘Snow Globe’.
Aldi sought to appeal the judgment. They applied to the Court of Appeal on the basis that four images of the M&S gin bottle had been registered as colour photographs, two of which were said by M&S to have been taken against a dark background. As the judge had not addressed this issues, not had he given his reasons for finding that two of the registrations showed a light in the bottle but two did not, the Court had to revisit the findings.
What did the Court decide?
The Court of Appeal concluded that M&S was correct, and the two registrations in question did show a clear liquid against a dark background, and that all four registrations showed a light in the bottle. The appeal was dismissed.
Conclusion
Registered designs are an effective and low-cost tool to combat lookalike products and thoughtful registration of IP lies at the heart of many a business success. It can be difficult to rely upon trade mark infringement and passing off claims and the snow globe wars demonstrates the value of registering designs.
How we can help
It is essential to get the registered design application right and we can provide specialist advice about how to maximise the protection available to you. If you would like help or support with registered designs, or other intellectual property rights, then visit our dedicated Intellectual Property pages or contact our expert team.
