Common rivals, Aldi and Marks & Spencer have done it again – they have locked horns over the IP infringement of a novel product concept. This time, M&S successfully brought proceedings in the UK against Aldi for infringing their light-up gin bottle design. Head of Intellectual Property, Gerard Kelly reviews the implications of this decision for brand owners.

Aldi recently posted on their Facebook page that ‘Marks and Spencer can’t stop whin-gin #ginnocent’ as they found themselves on the losing end of another IP battle. This time, Marks & Spencer (M&S) had accused Aldi of copying their light-up gin bottles that were sold during Christmas 2020.

Both companies’ gin bottles are bell-shaped, illuminate light from the base, and contain gold flakes within the gin. Aldi argued that such features were ‘commonplace’ and ‘widely known across the sector’. In addition, Aldi argued their bottles included the words ‘The Infusionist Small Batch’ and that this inclusion made their bottles different from M&S’s design which boasted no words. On the other hand, M&S argued that Aldi’s gold flake blackberry and clementine gin liqueurs under the name ‘The Infusionist’ were ‘strikingly similar’ to their own.

Marks & Spencer’s bottle (left) and Aldi’s bottle (right).

M&S’s design for their light-up bottle was registered in April 2021 in the UK. However, their lawyers claimed that the designs were first launched in 2019 as part of their ‘Gin Globes Project.’ Nevertheless, Aldi only started to sell their own light-up gin bottles in November 2021, after M&S’s design was already registered.

M&S’s case was brought to the IP Enterprise Court in the UK and was heard on 16 December 2022. Judge Richard Hacon went back to the statutory test and considered ‘whether the [registered designs] in suit and the Aldi bottles produce a different overall impression.’ He found that there was no different overall impression because of the features the two bottles had in common. The judge found that the differences, such as the words on Aldi’s bottle, were ‘relatively minor detail’ and that the snow effect from the gold flakes and the bottle shape, were similar.

The High Court ultimately ruled that Aldi had infringed M&S’s design. Aldi has been vocal about the loss and has announced they will be appealing the decision. As a result of the infringement, Aldi could find themselves paying damages or even an account of profits to M&S.

This is not the first time that the two supermarkets have gone head-to-head, and Aldi has made sure to bring their disputes into the limelight. In April 2021, M&S filed an intellectual property claim in the UK High Court against Aldi for their ‘Cuthbert the Caterpillar’ chocolate sponge roll that closely resembled their own ‘Colin the Caterpillar’ cake. In response to the lawsuit, Aldi coined the phrase ‘#FreeCuthbert’ on Twitter and brought a movement to the masses.

M&S’s Colin the Caterpillar (left) and Aldi’s Cuthbert the Caterpillar (right).

Both caterpillar cakes, the subject of the dispute, were made of milk chocolate, buttercream filling, and sweet decorations on top. M&S argued Cuthbert infringed their trade marks and rode on the coat-tails of Colin’s reputation. M&S alleged passing off and their secondary cause of action was trade mark infringement. They hold multiple trade marks for Colin the Caterpillar and argued he had acquired and retained an enhanced distinctive character and reputation. M&S had first launched Colin the Caterpillar around 30 years ago. M&S claimed that the similarity between the two cakes could lead consumers to believe that both cakes were of the same standard, despite M&S’s cake being more expensive.

M&S sought to have Aldi remove its cake from sale and for Aldi to agree not to sell anything resembling Colin in the future. Unfortunately for the social media keyboard warriors following the dispute online, the two supermarkets reached a settlement in February 2022. Cuthbert has been freed but requires a few design tweaks. It has not been disclosed what these change requirements are.

Conclusion

The disputes between Aldi and M&S should be a constant reminder and a call to arms to businesses to register their trade marks and designs for product packaging and get-up to avail of additional protection, should disputes arise with competitors. Furthermore, the gin bottle decision reiterates that the courts will consider the ‘overall impression’ of a product rather than whether individual features on their own are similar enough to be infringing. Businesses should keep this in mind when creating products or marks, to avoid treading too closely to a competitor’s creation.

For expert advice on successfully protecting your organisation's IP rights, contact a member of our Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.