Marks and Spencer PLC v Aldi Stores Limited

Infringement of a registered design is assessed by asking whether the accused design produces a different overall impression on the informed user. The court must first identify the relevant sector, informed user, design freedom and relevant design corpus. Features dictated solely by technical function are disregarded, while other features may receive different weight according to their practical and visual significance. The comparison is made objectively and, where a valid priority date exists, as at that date. Disclosures by the designer during the statutory grace period are excluded from the design corpus relevant to infringement. The court must compare the overall impressions directly; it must not decide the issue merely by asking whether the accused design is closer to the registered design than to the closest prior art.

Marks and Spencer PLC owned four registered designs for light-up gin bottles, with a priority date of 15 December 2020. Aldi Stores Limited marketed gin liqueur bottles containing gold flakes and an integrated light. M&S alleged infringement of UK registered designs 6134278, 6134280, 6134282 and 6134284.

The central issues were the proper interpretation of the registered designs, the relevant sector and informed user, the designer’s degree of freedom, the treatment of technically dictated features and trade-mark branding, the date of comparison, the scope of the design corpus during the grace period, and whether Aldi’s bottles produced a different overall impression.

1. Statutory test. Under Registered Designs Act 1949, s 7, infringement turns on whether the accused design produces a different overall impression on the informed user. The court must clear the necessary interpretative and analytical groundwork before making that comparison.
2. Interpretation and comparison. The registered designs were interpreted objectively from the images. The proprietor’s circumstances, designer’s intention and products marketed by the proprietor were irrelevant to that interpretation. The relevant sector was spirits and liqueurs in the UK, and the informed user was a member of the UK public who purchased and consumed such products.
3. Framework. The court adopted the six-part approach in Cantel Medical (UK) Limited v ARC Medical Design Limited, derived principally from H&M Hennes & Mauritz BV & Co KG v OHIM: identify the sector; identify the informed user and their awareness and attention; assess design freedom; and compare the overall impressions, taking account of the sector, design freedom and design corpus. Technically dictated features are ignored, and individual elements may receive different weight.
4. Date and grace period. A valid priority date is the relevant date for comparing overall impressions. The design corpus for infringement excludes disclosures by the designer or successor in title during the 12-month grace period. That exclusion applies to any design disclosed by the designer during the grace period, not merely the precise design ultimately registered.
5. Application and outcome. Aldi’s bottles shared the registered designs’ botanics bottle shape, stopper shape, winter scene, and, where applicable, snow effect and integrated light. Those similarities were significant and cumulatively striking against the design corpus. Differences in colouring, branding, orientation, scene detail and stopper shade were matters of relatively minor detail. The Aldi bottles therefore did not produce a different overall impression. The marketing of Aldi’s products infringed UK 78, UK 80, UK 82 and UK 84.