M&S v Aldi: IP rights infringement… Let the battle be-gin!

Readers of this publication may recall “Caterpillargate” in April of last year when Marks & Spencer (M&S) claimed that Aldi had copied its Colin the Caterpillar cake.  That copyright dispute was eventually settled out of court by the parties.  A new spat has now flared up between the two supermarket giants.  Once again, M&S is alleging that Aldi is infringing its intellectual property (IP) rights.

In the latest dispute, M&S has sued Aldi for allegedly infringing the design of its “Light Up Gin Bottles”.  These are festively decorated bottles which have a silhouette design, edible gold flakes within the gin and a light up feature in the base of the bottle.  M&S owns a number of registered designs which protect the shape and contour of the bottle and cork stopper, the integrated light feature, the gold leaf flakes, a winter forest silhouette and the positioning of that graphic on the bottle.

M&S claims that Aldi’s blackberry and clementine gin liquor is strikingly similar to its Light Up Gin.  Aldi dispute this and contend that their bottle is different as it contains prominent branding as well as the woodland silhouette coming in two colours.  Aldi also asserts that the design of their bottle was bright and busy whereas M&S’ design was more subdued.  Further, Aldi contends that the design features used by M&S were commonplace and widely known across the industry.

For M&S to prove that Aldi has infringed its designs, it will need to demonstrate that Aldi’s bottle gives the same overall impression on consumers that its own bottle does.  It is immaterial whether Aldi directly copied the designs or came up with them independently for the purposes of proving infringement because registration gives the design owner the exclusive right to use their design.

The dispute reached the High Court this month where M&S is seeking an injunction to restrain Aldi from further infringing its protected designs, an order for Aldi to destroy or hand over anything constituting a potential breach of the injunction and an enquiry into the damages arising from the alleged infringement.  The High Court trial has just concluded and the Judge has reserved judgment which is expected to be handed down early in the New Year.

Although it is the season to be jolly there is obviously no festive cheer between the two supermarket rivals.

Blacks Solicitors can assist you with the registration of IP rights and the protection of those rights, including any disputes that may arise. Please email or call our Dispute Resolution team on 0113 207 000 for advice or assistance.