Introduction

The case of Marks and Spencer PLC v Aldi Stores Ltd ([2024] EWCA Civ 178) represents a significant appellate decision in the realm of intellectual property law, specifically concerning the infringement of registered designs under the Registered Designs Act 1949. This dispute centers around M&S's Christmas market product line of gin-based flavoured liqueurs, characterized by festively-decorated bottles featuring edible gold flakes and integrated LED lights. Aldi challenged the originality of these designs, leading to a landmark judgment that delineates the interpretation of registered designs and the application of grace periods in infringement assessments.

Summary of the Judgment

The Intellectual Property Enterprise Court initially ruled in favor of M&S, granting relief for infringement of four registered designs. Aldi appealed this decision, contesting both the interpretation of the registered designs and the manner in which grace periods were applied in assessing infringement. The Court of Appeal upheld the original judgment, reinforcing the exclusion of grace period disclosures from the design corpus considered during infringement analysis. This decision underscores the broader legal principles governing design protection and the scope of grace periods.

Analysis

Precedents Cited

The judgment extensively referenced key cases that have shaped the interpretation of registered designs:

• Magmatic Ltd v PMS International Group plc [2016] UKSC 12: Emphasized objective interpretation of design registrations without considering the designer's intentions.
• Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL [EU:C:2012:88]: Reinforced that external circumstances irrelevant to the design itself should not influence its interpretation.
• Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936: Demonstrated the admissibility of physical embodiments of designs in infringement assessments.
• Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206: Highlighted the importance of the design corpus in determining overall impression.
• Pulseon OY v Garmin (Europe) Ltd [2019] EWCA Civ 138: Confirmed that multi-factorial assessments of overall impression are grounds for appellate review only upon legal error.

These precedents collectively establish an objective framework for interpreting registered designs, focusing on the visual and aesthetic aspects as perceived by an informed user.

Legal Reasoning

The crux of the Court’s reasoning hinged on two primary issues:

• Interpretation of Registered Designs: The court evaluated whether the designs in question indeed featured integrated LED lights and whether the backgrounds were dark, as initially contested.
• Application of Grace Periods: A pivotal aspect was determining whether disclosures made during the grace period should be considered in infringement assessments, mirroring their treatment in validity assessments.

The appellate court affirmed that grace period disclosures must be excluded when assessing infringement, aligning this with their exclusion in validity determinations. This ensures that the scope of design protection remains robust, preventing competitors from circumventing design protections through grace period disclosures.

Additionally, the court underscored the necessity of evaluating each registered design separately while considering the collective design corpus. This approach ensures that the overall impression remains consistent and that minor differences do not dilute the protection afforded to the designs.

Impact

This judgment reinforces the protective mechanism of registered designs by ensuring that grace periods do not undermine the scope of infringement claims. Future cases will benefit from this clarity, particularly in scenarios where designers may seek to test or iterate designs within grace periods. The decision provides a clear directive that such disclosures will not weaken the enforceability of registered designs, thereby offering stronger safeguards for designers against potential infringements.

Complex Concepts Simplified

Design Corpus

The "design corpus" refers to the body of existing designs against which a registered design is compared to assess its uniqueness and potential infringement.

In simpler terms, when determining whether a new design infringes upon a registered design, the court examines all existing designs (the corpus) to see if the new design is sufficiently distinct or not.

Grace Period

A grace period allows designers to disclose their designs publicly without such disclosures affecting the novelty or uniqueness required for registration, provided the registration is filed within a specified timeframe.

Think of it as a "grace window" where designers can showcase their creations to the market, receive feedback, and refine their products before officially registering the design for legal protection.

Overall Impression

The "overall impression" is the general aesthetic and visual impact a design has on an informed user.

It encompasses elements like shape, color, texture, and ornamentation, and is used to determine whether two designs are substantially similar in the eyes of consumers.

Conclusion

The appellate decision in Marks and Spencer PLC v Aldi Stores Ltd serves as a definitive guide on interpreting registered designs and the application of grace periods in infringement cases. By affirming that grace period disclosures should be excluded from the design corpus during infringement assessments, the court has reinforced the integrity and enforceability of design protections. This ensures that designers can confidently innovate and bring their products to market without fear that controlled disclosures will inadvertently weaken their legal safeguards. The judgment not only clarifies existing legal principles but also sets a robust precedent for future intellectual property disputes in the design domain.