M&S Allegin' Design Infringement ' Aldi Sparks New Row

• Published date: 27 January 2022
• Subject Matter: Intellectual Property, Patent, Trademark
• Law Firm: Albright IP
• Author: Mr Marc Maidment

'Tis the season to be jolly, but Marks and Spencer (M&S) are none too happy about Aldi's two new gin product designs. Whilst Aldi's Twitter team has been making light of it with some tongue-in-cheek tweets, M&S believes that Aldi has infringed some of its UK registered designs and has commenced legal action.

FROM CATERPILLAR CAKE TO GLITTERING GIN

M&S and Aldi have previous in the legal arena, having locked horns (or perhaps antennae?) earlier in 2021 over their respective caterpillar cakes. However, that particular fight was over trade mark rights. This time round, M&S is relying on its registered design rights.

M&S originally filed for a series of ten EU registered designs in December 2020 (pre-Brexit). This was after they had launched their products. For many territories, including China, this destroys the chance to obtain registered design protection. Wherever possible, file first and launch later.

M&S then followed up with a series of ten UK registered design rights (post-Brexit). M&S deliberately filed separately in the UK as opposed to allowing the UK Intellectual Property Office to 'clone' their EU designs. This was presumably done to maximise the length of UK design protection (i.e. they can still have the registered designs in force in the UK in the run-up to Christmas 2045 - save the date).

Two of the designs relate to silhouetted decorations, whilst the other eight show variations of light-up bell-shaped gin bottles. Or in other words... Gin-gle bells.

COURTING CONTROVERSY

Aldi isn't exactly known for treading gingerly when it comes to the thorny issue of copying. They have plenty of copycat products from "Jammy Wheels" (née Dodgers) to "Cheese Puffs" (a.k.a. Wotsits), amongst many others. Whilst similar to well-known brands, there isn't necessarily any confusion over the origin of the products, so Aldi can walk the line between what is and isn't an infringement of someone else's rights.

However, flirting with branding is a different ball game to that of registered designs. There doesn't need to be any confusion or misrepresentation about the origin of a particular product where registered designs are concerned. It's about whether the infringing product looks too similar to the registered design - is the "overall impression" the same or different in the eyes of the "informed user"?

N.B. Not as easy to predict as you might think - try our registered designs quiz to see how your judgment fairs in relation to some past design decisions.

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