Over the last couple of years, Marks and Spencer (M&S) has been facing-off with Aldi over various intellectual property infringement claims.
One of the most notorious was the “copycat-erpillar” case in which M&S claimed Aldi had copied their Colin the Caterpillar brand.
Not long after the copycat-erpillar case, Aldi launched a new product – the infusionist gin liqueur containing gold flakes and a light-up bottom. Shortly after Aldi launched the product, M&S filed a design infringement claim on the grounds that Aldi’s product was a copy of its own light-up gin liqueur containing gold flakes that it had launched a year earlier, in May 2020. A quick search of the UK Intellectual Property Office will show over twenty different designs for light-up gin and rum bottles registered in the name of Marks and Spencer plc. Each of the registered designs were registered in December 2021.
As part of its claim, M&S sought an injunction against Aldi in order to stop them from infringing on its designs as well as requiring it to surrender or destroy stock and pay damages plus costs.
Aldi defended the allegation by claiming that the words “The Infusionist Small Batch” wording on its bottle distinguished itself from M&S’s bottles.
Last week, the High Court ruled in favour of M&S stating that Aldi did in fact infringe M&S’s light-up gin design. In determining the case, the Court reverted to the statutory test, i.e., it had to identify the “overall impression” of the registered design and whether the alleged infringing design produces the same overall impression.
In doing so, the Court identified that the Aldi designs featured an integrated light, edible gold leaf flakes and similar bottle shape, all of which featured in the M&S design. The Court found that, in spite of the additional wording on the bottle, the features in common did not produce so much of a different overall impression and therefore the statutory test for design infringement was met.
Next Steps:
Aldi have not gone down without a fight in any of the infringement allegations put forward by M&S. As such, and as expected, Aldi intend to appeal the decision by the High Court.
However, if unsuccessful, Aldi may be ordered to pay damages to M&S and may also be prevented from selling the same product again via injunction.
The two companies have been the focus of a multitude of social media spats over the last few years, which has enthralled consumers across the country. The ongoing cases between Aldi and M&S will be interesting for the public but more so for intellectual property enthusiasts who will want to see what precedents are set for other supermarkets intending to sell similar products.
If you have any queries about intellectual property infringement, or would like to know what our team thinks about the case, please get in touch with a member of our Intellectual Property team.
