In February 2023, we covered a judgment finding that Aldi infringed Marks & Spencer’s registered designs relating to light-up gin bottles. Upholding that decision, the Court of Appeal has provided some important guidance for designers and IP lawyers.
The Court of Appeal judgment was written by Arnold LJ, and while he affirmed the overall conclusion of the first instance judgment, he made a number of criticisms of it. The other two judges agreed with his judgment.
The Aldi bottles
The M&S designs
Interpretation of the designs
The first issue concerned the interpretation of the four registered designs that were asserted, each of which had two photographs. One of the questions was whether the designs included an integrated light in the base of the bottle. The first instance judge found that two did, but two did not: the Court of Appeal found that all four did.
This decision was reinforced by inspection of the Marks & Spencer products. Drawing on CJEU and Court of Appeal case law, Arnold LJ said the first instance judge (HHJ Hacon) incorrectly stated that the designer’s products are irrelevant to the interpretation of the design. On the contrary, they can be used to confirm conclusions drawn from the designs.
Moreover, the applications for the designs on the UKIPO website included the statement “Light Up Gin Bottle” as an “indication of product”. In a case such as this, Arnold LJ said the indication of product can be relied on to resolve an ambiguity as to what is shown in the image:
“If a third party is searching the register for designs of bottles incorporating a light, they may be uncertain purely from inspecting the images in the Registered Designs whether they depict such a light. If so, the statement that the product to which the designs are intended to be applied is a ‘light up gin bottle’ provides an unambiguous answer to the question.”
Grace period and priority date
The question of whether Aldi’s bottles for gin-flavoured liqueurs infringed the Marks & Spencer designs raised several important issues, which were argued on appeal.
One issue was the effect of the grace period. HHJ Hacon held that all disclosures by the designer of the registered design during the grace period are to be disregarded when assessing infringement (as opposed to validity).
Arnold LJ agreed with the thrust of this, stating: “the purpose of the grace period would be substantially defeated if disclosures by the designer during the grace period were relevant when considering infringement. Although they would not prejudice the validity of the registered design, they would reduce its scope of protection, potentially to nil. That cannot have been what the legislature intended.”
However, contrary to the judge, he said that the grace period aims to protect the designer from adverse consequences of any disclosure by him/her (or a successor in title) during the grace period of the registered design or any design which does not produce a different overall impression. On this interpretation, he said:
“the designer will be fully protected with respect to both validity and infringement if all the variants create the same overall impression. … If designers test market a number of distinct designs, but only decide to register one, then they must accept the risk that the other designs may in some cases affect the scope of protection of the registered design.”
This finding however made no difference to the overall assessment of infringement in this case.
Another issue concerned the relevant date for assessing the overall impression of the designs: the judge held it was the priority date, rather than the filing date.
Arnold LJ rejected arguments that this was procedurally unfair or wrong in law. On the first point, it did not affect the evidence or arguments at trial. On the latter point, he said the judge was right: “A claim to priority, like the grace period, is relevant to both validity and infringement because it affects the overall impression of the registered design which, as discussed above, is the same for both purposes.”
Same overall impression?
Finally, Arnold LJ rejected arguments that the judge had made an error in comparing the overall impressions of the Aldi products with those of the designs, and said he was entitled to find there was infringement:
“The weight to be given to the shape of the bottles and the stopper was a matter for the judge as part of his overall assessment. The fact that the shape of the bottle was protected by a third party registered design is irrelevant apart from the fact that the design therefore formed part of the design corpus which the judge took into account. He also took the stoppers in the design corpus into account.”
What does this mean?
Decisions of the Court of Appeal finding registered designs valid and infringed are rare, so this is a notable case.
Moreover, the judgment by one of the UK’s most experienced IP judges clarifies a number of disputed issues in design law, which will have broad implications for designers and manufacturers. If you would like to know more about how it might affect your business, please contact us.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com