Marks and Spencer PLC v Aldi Stores Limited
[2023] EWHC 178 (IPEC)
Marks & Spencer PLC v Aldi Stores Limited
27 February 2024
[2024] EWCA Civ 178
Court of Appeal
Aldi copied M&S's Christmas gin liqueur bottle design. A judge said Aldi infringed M&S's design rights. Aldi appealed, but the Court of Appeal agreed with the judge. The court clarified some confusing points of design law, mainly around what counts as 'copying' and what evidence is important in deciding if a copy is too similar.
Key Facts
- •Marks & Spencer (M&S) sued Aldi for infringement of four registered designs for a Christmas gin liqueur.
- •The designs featured a festively decorated bottle with edible gold flakes, an LED light, and clementine flavour.
- •Aldi launched a similar product.
- •The appeal concerned the interpretation of the registered designs, the effect of the grace period, the effect of the priority date, and the design corpus.
Legal Principles
The scope of protection of a registered design depends on the proper interpretation of the registration, objectively.
Magmatic Ltd v PMS International Group plc [2016] UKSC 12, Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL [EU:C:2012:88]
When assessing infringement, the issue is whether the designs of Aldi’s products produce on the informed user a different overall impression to each of the Registered Designs, considered separately.
Section 7(1) of the Registered Designs Act 1949
The four-stage approach to assessing design infringement: (1) Identify the sector; (2) Identify the informed user; (3) Determine the designer’s degree of freedom; (4) Assess the outcome of the comparison.
Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat)
The design corpus is relevant in assessing overall impression, considering prior art.
Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936
Disclosures by the designer during the grace period are disregarded when assessing infringement.
Section 1B of the 1949 Act, Article 6(2)(b) of the Designs Directive, Sphere Time v Office for Harmonisation in the Internal Market [EU:T:2011:269]
Overall impression of registered designs should be assessed at the priority date.
Section 14 of the 1949 Act, Article 4 of the Paris Convention
Outcomes
Appeal dismissed.
The court found that Aldi's products did not produce a different overall impression on the informed user compared to M&S's registered designs. The court also addressed and rejected Aldi's arguments regarding the grace period, priority date, and design corpus.