M&S v Aldi - Battle of the "Light-Up" Gin Liqueurs
In February 2022, Marks and Spencer (M&S) and Aldi reached a confidential agreement in their Colin/Cuthbert the Caterpillar cake dispute when M&S claimed that Aldi had infringed its intellectual property. M&S and Aldi have since gone to court in a dispute over their "light-up" gin liqueurs. This case went to trial on 16 December 2022.
The History
Towards the end of 2020, M&S started selling gin-based liqueurs in festively decorated bottles. The liqueur contains gold flakes which becomes suspended in the liquid when the bottle is shaken. The bottles have a winter themed design and the base of the bottle has a LED light which, when turned on, illuminates the bottle’s contents. When shaken, the gold flakes imitate snow.
The design of these bottles is protected by four M&S Registered Designs. Each has a priority date of 15 December 2020.
In November 2021, Aldi started selling its own gin liqueurs containing gold flakes in light-up bottles. The liqueurs come in two flavours, clementine and blackberry.
M&S alleged that the advertising and sale of these Aldi products infringed its UK Registered Designs.
As set out in the Registered Designs Act 1949 (as amended), a design is required to be new and have individual character. In determining the extent to which a design has individual character, the degree of freedom of the author in creating the design shall be taken into consideration.
There was much discussion regarding the designer’s degree of freedom particularly with the design to be printed on the bottle and the numerous different shaped bottles that were available. According to M&S, there was an “Aladdin’s cave” of alternative shapes.
Regarding the design, since gold snow was to be used in the liquid, it made sense to have a winter design. However, there was almost complete freedom as to how to make a design look wintry. Therefore, the judge determined that the designer had considerable freedom.
The design corpus was also considered in this case. M&S produced a concept document created in April 2019 that included illustrations of what it called the “gin competition” showing 33 different gin bottles that represented just a small proportion of the totality within the design corpus by December 2020. Many of the examples in the evidence were significantly different to the M&S’s Registered Designs.
His Honour Judge Hacon then considered whether the Aldi’s gin bottles gave the informed user a different overall impression to that produced by the M&S’s Registered Designs. He concluded that given:
(1) the identical shapes of the two bottles;
(2) the identical shapes of the two stoppers;
(3) the similar winter scene over the entirety of the straight portion of the bottles;
(4) the snow effect; and
(5) the integrated light
the similarities would appear significant to the informed user and cumulatively they would be striking. As a result, he ruled that the Aldi bottles did not produce a different overall impression.
Aldi pointed to several differences, such as Aldi’s bottles having on the front the words “The INFUSIONIST Small Batch” but the judge determined that these differences were of relatively minor detail which did not affect the overall impressions.
Consequently, it was found that the marketing of Aldi’s gin liqueur products infringed M&S’s Registered Designs.
This case highlights the value in protecting all aspects of Intellectual Property. If your company requires advice on your intellectual property, please contact us.