Aldi’s success last month in defending a trade mark infringement claim brought by Thatchers (you can read more on this here), may have dampened brand owners’ spirits. But a judgment handed down this week could leave brands with a more “glass half full” outlook on stopping so-called “copycat” products, as the Court of Appeal have dismissed Aldi’s appeal in relation to registered design infringement.

Background 

M&S began selling a range of festive gin-based flavoured liqueurs in 2020. The liqueurs came in bottles decorated with a festive display, featuring gold flakes to give a snow globe effect once shaken, and an LED light in the base to illuminate the bottle. M&S registered a series of four designs to protect their range, with a priority date of 15 December 2020 (the “Registered Designs”). 

In November 2021, Aldi introduced a range of gin-based flavoured liqueurs, which also featured a festive display, gold flakes and an LED light. 

Registered Designs	Aldi's product
(two of the Registered Designs)

M&S issued proceedings against Aldi for the infringement of the Registered Designs, and in a judgment dated 31 January 2023, Judge Hacon found in favour of M&S. You can read more on the judgment in our article.

Under the Registered Design Act 1949 (“RDA”), a registered design protects the lines, contours, colours, shape, texture, materials and/or ornamentation of a design (section 1(2) RDA), and once registered the proprietor has the “exclusive right to use the design and any design which does not produce on the informed user a different overall impression” (section 7(1) RDA). Aldi, therefore, was found to have infringed the Registered Designs as their product did not produce a different overall impression on the informed user. 

Aldi appealed against an order by Judge Hacon granting M&S relief for infringement of their Registered Designs on several grounds.

The appeal 

Aldi’s appeal centred on the first instance judge’s interpretation of the scope of the Registered Designs, the application of the rules around the priority date (i.e. the date from which a design is protected) and grace period (i.e. the 12 months prior to the priority date), and the assessment of the infringement. We’ve summarised the key points below. 

(1) Interpretation of the Registered Designs 

At first instance, the judge’s interpretation was that two of the Registered Designs featured an integrated LED light, and that two of the four depicted the design against a dark background. Aldi contended that the judge was in error, and that the images actually showed a dark bottle or dark-coloured liquid. The court dismissed this, but held that the judge was in error to not consider that all of the Registered Designs featured the LED light. In reaching this conclusion, the court concluded that:

• Examining a physical product to which a registered design is applied can assist with interpreting the registered design; and 
• The text of the “indication of product” on the register can be helpful when there is ambiguity in what the image shows.

(2) Application of rules around priority date and grace period

Aldi contended that the first instance judge had been incorrect to hold that designs disclosed by the designer during the grace period were to be excluded from the design corpus when assessing infringement. Aldi believed this provision was only applicable when determining the novelty and individual character of a design upon registration. 

The court held that the first instance judge had been correct to exclude the designs disclosed by the designer during the grace period, as otherwise the purpose of the grace period would be defeated (i.e. if disclosures during the grace period of such designs were part of the design corpus, the scope of protection of the registered designs would be significantly reduced). The court reiterated that a designer is protected from adverse consequences of any disclosure during the grace period of either the registered design or any design which does not produce a different overall impression to that of the registered design. 

(3) Assessment of infringement 

In the initial judgment the judge had applied the four-stage test in Cantel Medical v ARC Medical Designs:

• Identify the sector to which the products incorporating the design belong; 
• Identify the informed user, their awareness of the prior art, and the level of attention they would pay in a comparison of the designs; 
• Determine the designer’s degree of freedom in developing the design; and 
• Assess the outcome of the comparison bearing in mind the above.

The court dismissed Aldi’s appeals in relation to the judge’s assessment of infringement, holding that the judge had been correct to conclude that Aldi’s product did not produce a different overall impression. 

Designs as a method of combatting lookalikes

The Court of Appeal’s dismissal of Aldi’s appeal highlights the protection rightsholders can obtain by registering their designs, and the ability this can give them to combat lookalikes. A key benefit to registering designs (instead of relying on copyright or unregistered design rights) is that M&S did not have to prove that Aldi had “copied” the Registered Designs, which can often be a barrier to succeeding in these cases. Furthermore, although registering trade marks can be of assistance to protect elements of the get up of a product, it is not guaranteed protection against “lookalikes” (see Thatchers v Aldi). 

However, whilst registered designs are a useful tool against lookalikes, it is important that any registration adequately depicts the full design it is intending to protect. Aldi’s counsel (albeit unsuccessfully) picked apart the Registered Designs in this appeal, and the scope of protection they provided M&S. Undoubtedly, M&S successfully withstood this because it had registered four separate designs, showing the design in different states (e.g. gold flakes shaken). To give brand owners the greatest protection for their products, it may therefore be sensible to register a range of designs.