Aldi’s infringement of M&S’ registered design upheld by Court of Appeal (but no caterpillars involved this time)

You can read a more detailed analysis of the case here.

The Court of Appeal upheld a High Court finding of registered design infringement by Aldi in respect of gin bottles which featured a winter scene, gold snow globe-style flakes and a light in the base.

Although successful registered design cases are few and far between, the actual result on appeal was not that surprising. This is due to the relatively high hurdle which Aldi faced in trying to overturn an experienced judge’s findings that the Aldi design gave the same overall impression to the informed user as the M&S registered designs, which is the test for infringement. Aldi would have to have persuaded the Court of Appeal that the judge had made an error of law or come to a decision which no reasonable tribunal could have reached.

However, the decision is interesting as it answered several questions which have been puzzling design lawyers for some time.

The designs in issue

One of the four M&S designs  

One of the two Aldi infringements

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. However, Aldi argued that they showed a dark liquid in the bottles, or a dark bottle. As the judge had not addressed this issue, nor had he given his reasons for finding that two of the registrations showed a light in the bottles but two did not, the Court of Appeal had to revisit the findings. It 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.

In reaching these conclusions the Court of Appeal corrected the trial judge’s statement that examining products made to the designs was irrelevant to the interpretation of a design, and cited several cases which had approved the use of actual products as a reference. 

Does the product indication have any bearing on the interpretation of a design?

When filing a registered design, it is necessary to assign a product indication e.g. “gin bottle”. This assists people searching the register to find a design in a particular category. The Court of Appeal held that this purpose leads to the conclusion that the product indication can be relied upon to resolve an ambiguity in terms of what is shown in the registration. The description in this case of “Light Up Gin Bottle” would confirm that the representations did show the presence of the light in the bottle. 

Should earlier designs of the proprietor be ignored when assessing the design corpus for the purposes of infringement?

The scope of protection of a registered design is based in part on the existing design corpus. A design which is very different from other earlier designs will attract wider protection than one which is only slightly different from the existing design corpus, when the scope of protection is likely to be limited to those features which set it apart from the earlier designs.

The legislation gives the proprietor a 12 month grace period in which they can test the market for their design before having to apply to register it. However, if different iterations of the design are released, these could serve to destroy the novelty of any subsequent application for the design, since they would be earlier designs which could give the same overall impression? The legislation therefore includes an exception for the disclosure of the proprietor’s own earlier designs, saying that these should be ignored when considering novelty and individual character for the purposes of determining registrability of the design. Aldi argued that such designs should be taken into account when assessing infringement, rather than registrability, as there was nothing in the legislation to say that they should not be.

However, the Court of Appeal held that just because there was no express wording in the legislation to that effect, it would be wrong to take them all into account as that would defeat the purpose of the grace period, as they would reduce the scope of protection of the registration potentially to nothing. It was right that the same test applied to both validity and infringement.

Which earlier designs should be ignored?

The Court of Appeal then had to decide whether any earlier design of the proprietor was excluded, whether it was only earlier designs of the proprietor which gave the same overall impression as the registered design, or just the identical design.

The Court of Appeal concluded that the middle option was the correct one. This serves as a warning for designers who test the market with a range of different designs – unless they apply to register all of them, some of those designs which may not give the same overall impression to the one(s) registered could narrow the scope of protection of the registered designs.

When should the overall impression of a design be assessed for infringement purposes?

In many cases this will simply be the filing date of the registered design. However, it is possible to claim a priority date from an earlier registration filed for the same design in another convention country provided that that earlier registration was filed within 6 months of the UK filing. 

The Court of Appeal held that the priority date was the key date, and did not agree with Aldi that it was illogical that the overall impression of the design would be assessed at a date which was earlier than the date from which the design could be infringed (i.e. the date of registration of the UK design). Again, the assessment of overall impression should be the same for both validity and infringement. 

Conclusion

It is reassuring to see confirmation of the principle that there should be no difference between the assessment of the overall impression given by a design for the purposes of validity and infringement. Design law is already complicated enough, so anything which helps to simplify it can only be a good thing.