Marks & Spencer PLC v Aldi Stores Limited
[2024] EWCA Civ 178
Marks and Spencer PLC v Aldi Stores Limited
31 January 2023
[2023] EWHC 178 (IPEC)
High Court
M&S's Christmas gin bottles had a special design. Aldi made similar bottles. A judge said Aldi copied M&S's design too much, so Aldi has to stop selling their similar bottles.
Key Facts
- •Marks & Spencer (M&S) launched gin liqueurs in festively decorated, light-up bottles protected by five registered designs (RDs).
- •Aldi started selling similar gin liqueurs in light-up bottles.
- •M&S claimed Aldi's products infringed four of their registered designs (UK 78, 80, 82, and 84).
- •The registered designs' priority date was 15 December 2020.
- •The case centered on whether the integrated light in the bottles was a feature of the registered designs and whether Aldi's bottles produced a different overall impression.
Legal Principles
Registered design infringement occurs if the accused design does not produce a different overall impression on the informed user compared to the registered design.
Registered Designs Act 1949, Section 7(1)
The scope of protection depends on the interpretation of the registered design image, considering features like lines, contours, colors, shape, etc.
Magmatic Limited v PMS International Group plc [2016] UKSC 12
Design interpretation is objective; the designer's intentions are irrelevant.
Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL (Case C-488/10)
Features solely dictated by technical function are ignored in the infringement assessment.
Registered Designs Act 1949, Section 1C(1)
The informed user is observant, knowledgeable of the design corpus, and pays close attention.
Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat)
Comparison of overall impressions is assessed as of the priority date if one exists.
Dyson Ltd v Vax Ltd [2010] EWHC 1923 (Pat)
The grace period (12 months before priority date) for disclosing designs by the designer is irrelevant to infringement assessment.
Registered Designs Act 1949, Section 1B
Outcomes
Aldi's gin liqueur bottles infringe M&S's registered designs UK 78, 80, 82, and 84.
The Aldi bottles produce the same overall impression as the M&S registered designs due to significant similarities in shape, stopper, winter scene, and (in some cases) integrated light. Differences were minor details.
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