M&S and Aldi: the importance of IP rights

Answer

Marks & Spencer has sued Aldi (again) for allegedly infringing upon its protected design. This time, Marks & Spencer allege that Aldi copied its ‘Light Up’ Christmas gin with its own ‘The Infusionist’ gin. Consequently, M&S is seeking an injunction against Aldi to either destroy or surrender its stock, as well as pay damages and costs.

Which rights have been infringed?

M&S has a protected design right over its own ‘Light Up’ gin bottles, which have lights and gold flakes in the liquid. Aldi's ‘The Infusionist’ gin bears the same bottle design with lights and gold flakes in its liquid. M&S, therefore, alleges that these are "strikingly similar" to its own which breaches its protected design and could cause customers to become confused.

Sound familiar?

M&S entered a legal battle with Aldi last April over its ‘Cuthbert the Caterpillar’ birthday cake. The issue here was how similar Cuthbert was to M&S' own trademarked caterpillar cake, Colin the Caterpillar.

What is a trademark?

Trademarks are defined under Section 1(1) Trade Marks Act 1994 as "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings".

Trademarks must be registered and can last indefinitely, and means that the owner has an exclusive right to use the trademark with statutory protection.

A trademark can be infringed if the similarities in the product or service cause a likelihood of confusion to the public. M&S argues that Aldi's Cuthbert does indeed cause a likelihood of confusion to the consumer due to its similarities with M&S' Colin.

What is a design right?

A design right is a commonly forgotten but very effective intellectual property (IP) right. If registered, it is protected for 25 years and the owner has exclusive rights to the design and any design similar enough not to produce a different overall impression on the informed user.

Interestingly, there does not need to be any confusion or misrepresentation about the origin of a particular product where registered designs are concerned. It is about whether the infringing product looks similar to the registered design. The question is whether the ‘overall impression’ is the same or different in the eyes of an informed user.

M&S relies on four UK registered designs and are claimed to protect the appearance of a light-up gin bottle (eg, the shape and contour of the bottle and cork stopper), the light feature in the base of the bottle, the gold leaf flakes inside the bottle and a winter forest silhouette applied to the exterior of the bottle. M&S has also provided a number of examples of comparisons made in the press between the two products, which it says support its claim.

However, it is what is shown in the registered design documents that counts for registered design infringement, and not what the products look like when placed next to each other. Novelty and individual character are important here. Further, M&S argues that a designer of Christmas liqueurs has very considerable design freedom and the Registered Designs are entitled to a wide scope of protection. Therefore, if there were very few light-up gin bottles with gold flakes in the liquids available before M&S applied for a registered design over the product, M&S may well make a successful case for design freedom. It is also clear that there are a number of similarities between the elements of the Registered Designs and Aldi's products, all of which will impact the impression on the informed user.

It is worth noting that, even if M&S did not register any design rights, their product could still be protected under the Copyright, Design and Patents Act 1988. This allows a product to be protected in terms of its shape and not be commonplace. However, the product would only be protected for up to 15 years rather than the 25 years for registered designs.

The outcome

If M&S win, Aldi will have to destroy or hand over anything that falls under a potential breach of the injunction. This may dissuade Aldi from selling copycats of M&S products in the future and also may deter others from doing the same.

The ongoing disputes between Marks & Spencer and Aldi raise a number of interesting issues for lookalike cases, in particular how similar products can affect consumer perception and the actions a consumer may take. Protecting your IP rights is important as they can set your business apart from competitors by selling unique products and form an essential part of a company's marketing or branding. It also allows businesses to seek action against those who may have copied their ideas.

Mia Siddique is a first-seat trainee in the commercial dispute resolution team at Womble Bond Dickinson.