Court of Appeal Upholds Judgment in Marks & Spencer v Aldi Stores Design Infringement Case, Clarifying Grace Period and Priority Date Issues

Introduction

In the case of Marks & Spencer PLC v Aldi Stores Limited, the Court of Appeal dealt with an appeal against the decision of the Intellectual Property Enterprise Court regarding the infringement of Registered Designs. The case judgment focused on various legal principles, including the interpretation of registered designs, the assessment of design infringement, the effect of the grace period, the priority date in design infringement analysis, and the relevance of the design corpus.

Key Facts

Marks & Spencer (M&S) filed a claim against Aldi for infringement of Registered Designs related to a range of Christmas-themed gin liqueurs, notably featuring bottles with an integrated LED light to illuminate suspended edible gold flakes. Aldi countered with a similar product, leading to M&S alleging infringement. At first instance, the Intellectual Property Enterprise Court found in favor of M&S, prompting Aldi to appeal on several grounds.

Legal Principles

Interpretation of Registered Designs

The court emphasized that registered designs are interpreted objectively based on visible features in images, as per section 1(2) of the Registered Designs Act 1949 and Magmatic Ltd v PMS International Group plc. Disputes over whether certain features (such as an integrated light) were depicted in the registered designs were resolved by directly examining the registrations and considering the effect of the ‘indication of product’ provided during registration.

Infringement Assessment Framework

The court reiterated the four-stage framework applied in Cantel Medical (UK) Ltd v ARC Medical Design Ltd for assessing design infringement under section 7(1) of the 1949 Act: identification of the relevant sector, the informed user’s characteristics, the designer’s degree of freedom, and the comparison of overall impressions, considering the design corpus and excluding features dictated by technical function.

Grace Period and Priority Date

The court held that disclosures by the designer or their successor within the 12-month grace period preceding the relevant date do not count as prior disclosures for validity or infringement. This is rooted in the rationale that allowing such disclosures to impact the scope of protection would undermine the grace period’s purpose.

Regarding the priority date under section 14 of the 1949 Act, the court affirmed the judge’s view that the overall impression should be assessed as of the priority date rather than the filing date for both validity and infringement purposes, reinforcing the consistency in the treatment of registered designs over time.

Design Corpus Relevance

The concept of the ‘design corpus’—the collection of prior designs made available to the public—is critical to determining the originality and individual character of a registered design. The court agreed that the design corpus should be taken into account in infringement cases, as indicated by Procter & Gamble and Dyson Ltd v Vax Ltd.

Outcomes

The Court of Appeal dismissed Aldi’s appeal, upholding the Intellectual Property Enterprise Court’s judgment after a comprehensive analysis. Disclosures by the designer during the grace period were ruled inadmissible for both issues of validity and infringement. The court also held that the date for assessing the overall impression of a registered design is at the priority date, not at the date of the alleged infringement nor solely at the filing date.

Conclusion

The Court of Appeal’s judgment in Marks & Spencer PLC v Aldi Stores Limited reaffirmed several key principles regarding design infringement disputes. Proper interpretation and comparison of registered designs, reflecting the informed user’s view, are paramount. Furthermore, designers are protected against disclosures during the grace period for reasons of innovation and market testing. While confirming these principles, the court also reinforced the importance of the ever-relevant design corpus in assessing the uniqueness and scope of protection afforded to registered designs.