Marks & Spencer PLC v Aldi Stores Limited

The scope of a registered design is determined objectively from the registration, particularly its images. Separate registrations must be assessed separately, but images within one registration may be considered together. A proprietor’s corresponding physical product may confirm an interpretation, and an indication of product may resolve ambiguity without itself defining the scope of protection. Infringement requires comparison of overall impressions on the informed user, taking account of the design corpus and the designer’s freedom. The grace period excludes relevant designer disclosures from both validity and infringement assessments, but only for the registered design or designs producing the same overall impression. Distinct variants may still affect protection. A valid priority date is relevant to infringement as well as validity.

Marks & Spencer PLC obtained relief in the Intellectual Property Enterprise Court for infringement of four registered designs relating to illuminated, snow-globe-style gin bottles. His Honour Judge Hacon granted relief in a judgment reported at [2023] EWHC 178 (IPEC).

Aldi appealed on seven grounds, and M&S filed a respondent’s notice. The appeal concerned interpretation of the registrations, the use of physical products and product indications, the effect of the grace period and priority date, the design corpus, and the comparison of overall impressions. The central issues were how the designs should be interpreted and whether Aldi’s bottles produced a different overall impression on the informed user.

The Court of Appeal unanimously dismissed Aldi’s appeal. Lord Justice Arnold gave the judgment, with Lord Justices Moylan and Lewison agreeing.

1. Interpretation. The registration must be interpreted objectively. The proprietor’s conduct and the designer’s intention are irrelevant. Each registration must be considered separately, although images forming part of the same registration may be viewed together. A physical product marketed by the proprietor may be considered to confirm conclusions drawn from the registered images where it corresponds to the design. The judge was wrong to regard such products as irrelevant. The product indication may also assist in resolving an ambiguity in the images, although it does not affect the scope of protection as such. These conclusions were supported by Magmatic Ltd v PMS International Group plc [2016] UKSC 12, Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL [EU:C:2012:88], and other design authorities.
2. Infringement. Under section 7(1) of the Registered Designs Act 1949, each registered design must be compared separately with the contested design to determine whether it produces a different overall impression on the informed user. The assessment involves identifying the relevant sector and informed user, assessing the designer’s freedom, and comparing the overall impressions while considering the design corpus and disregarding features solely dictated by technical function. The informed user may attach different importance to different elements.
3. Grace period. The purpose of the grace period would be substantially defeated if designer disclosures could preserve validity but reduce infringement protection. The correct interpretation was the second of the alternatives considered: disclosures during the grace period of the registered design, or of a design producing the same overall impression, are disregarded for both validity and infringement. The protection does not extend to every distinct design tested during the period. A designer who tests distinct variants but registers only one accepts the risk that the others may affect its scope.
4. Priority and appellate review. A valid priority claim affects the overall impression relevant to infringement, so assessment is made at the priority date even though infringement can occur only after filing. There was no procedural unfairness because Aldi identified no prejudice in the judge deciding that pure point of law. Appellate intervention in the multi-factorial comparison was permissible only for an error of law or principle.
5. Application. All four registrations depicted an integrated light. The appropriate comparison was between each registration and Aldi’s products in corresponding states, including whether the flakes were settled or shaken. The judge was entitled to give substantial weight to the identical bottle and stopper shapes and to conclude that the differences did not alter the overall impression. The third-party registration of the bottle shape mattered only because it formed part of the design corpus.

• Court of Appeal (Civil Division): Aldi’s appeal against the order granting M&S relief for registered-design infringement was dismissed.
• Intellectual Property Enterprise Court: His Honour Judge Hacon granted M&S relief for infringement in the judgment reported at [2023] EWHC 178 (IPEC).