Marks and Spencer PLC v Aldi Stores Ltd

Factual and Procedural Background

This appeal concerns an order of His Honour Judge Hacon in the Intellectual Property Enterprise Court dated 24 February 2023, which granted relief to the Claimant for infringement of four United Kingdom Registered Designs relating to a product range of gin-based flavoured liqueurs sold in festively-decorated bottles containing edible gold flakes and an integrated LED light. The Defendant launched a rival product range with similar features. The Registered Designs were filed in April 2021, claiming priority from December 2020, and their validity was not challenged. The Defendant was granted permission to appeal on seven grounds, and the Claimant filed a respondent's notice raising one ground. The appeal involves legal issues under the Registered Designs Act 1949, as amended to implement the EU Designs Directive.

Legal Issues Presented

1. Whether the judge erred in his interpretation of the Registered Designs, specifically regarding the presence of an integrated light in the base of the bottle and the nature of the background depicted in the registered images.
2. The effect of the grace period on the assessment of infringement, particularly whether disclosures by the designer during the grace period should be disregarded.
3. The correct date for assessing the overall impression of the Registered Designs—whether it is the priority date or the filing date.
4. The composition and effect of the design corpus on the infringement analysis.
5. Whether the judge erred in his overall comparison of the Registered Designs with the Defendant's products, including the weight given to certain design features such as bottle shape and stopper design.

Arguments of the Parties

Defendant's Arguments

• The judge gave no reasons for concluding that certain registered designs have images created against a dark background and failed to address the Defendant's contention that the images show a dark-coloured bottle or liquid rather than a dark background.
• Disclosures made by the designer during the grace period should not be disregarded when assessing infringement, as the statutory provision applies only to novelty and individual character for validity purposes.
• The date for assessing overall impression should be the filing date, not the priority date, and the judge's approach was procedurally unfair and legally incorrect.
• The judge improperly weighted the similarity in bottle and stopper shapes, especially since the bottle shape was protected by a third-party registered design and similar shapes existed in the design corpus.
• The judge failed properly to consider the absence of the snow effect and integrated light in some registered designs when comparing them to the Defendant's products.

Claimant's Arguments

• The judge was entitled to find that certain registered designs have images against a dark background and that others show an integrated light, and the Court should reconsider these findings if necessary.
• The grace period protects the designer not only for disclosures of the same design but also for disclosures of designs that do not produce a different overall impression, thereby protecting the scope of the registered design's protection.
• The overall impression of the Registered Designs should be assessed as at the priority date, which affects both validity and infringement.
• The judge correctly applied the multi-factorial approach in comparing the Registered Designs with the Defendant's products, giving appropriate weight to similarities and differences.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Magmatic Ltd v PMS International Group plc [2016] UKSC 12	Design must be interpreted objectively; scope of protection depends on proper interpretation of the registration images.	Guided the court's approach to interpreting the Registered Designs images objectively, excluding intention of designer.
Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento SL [EU:C:2012:88]	Designer’s intention and conduct irrelevant to design interpretation.	Supported the court's objective approach to design interpretation.
PepsiCo Inc v Grupo Promer Mon Graphic SA [EU:C:2011:679]	Physical embodiments of designs may be used to confirm conclusions drawn from registered images.	Justified inspecting an example of the Claimant’s product to assist interpretation of the Registered Designs.
Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936	Court of Appeal considered physical embodiments of designs in infringement analysis.	Supported use of physical products to assist design comparison.
Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206	Physical products may be considered in assessing design infringement and validity.	Reinforced approach of considering actual products alongside registered designs.
Samsung Electronics (UK) Ltd v Apple Inc [2012] EWCA Civ 1339	Difference between product marketed and registered design affects scope of protection.	Clarified limits of reliance on physical embodiments differing from registered designs.
Cantel Medical (UK) Ltd v ARC Medical Design Ltd [2018] EWHC 345 (Pat)	Four-stage approach to design infringement: sector identification, informed user, designer's freedom, overall impression comparison.	Adopted as the framework for infringement analysis in the present case.
Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 (Ch)	Design corpus relevant to assessing overall impression for validity and infringement.	Supported exclusion of grace period disclosures from design corpus in infringement analysis.
Dyson v Vax [2010] EWHC 1923 (Pat)	Design corpus affects scope of protection for registered designs.	Approved the principle that the design corpus influences both validity and infringement.
Pulseon Oy v Garmin (Europe) Ltd [2019] EWCA Civ 138	Confirmed that overall impression is the same for validity and infringement.	Supported the court's approach to considering grace period disclosures in infringement.
Sphere Time v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [EU:T:2011:269]	Grace period allows designers to test market without affecting novelty or individual character.	Provided rationale for grace period’s application to infringement as well as validity.
Samsung Electronics Co Ltd v Apple Inc (EUIPO Invalidity Division, 2013)	Grace period protects disclosures of the registered design and similar designs that do not produce a different overall impression.	Supported interpretation of grace period protecting against disclosures of designs with same overall impression.
Green Lane Products Ltd v PMS International Group Ltd [2008] EWCA Civ 358	Indication of product does not affect scope of protection but assists in design classification and searchability.	Informed the court's view that product indication can assist in resolving ambiguities in design interpretation.
Grupo Promo Mon Graphic SA v Office for Harmonisation in the Internal Market [2010] ECR II-981	Indication of product can be relied on for purposes other than defining scope of protection.	Supported the court’s approach to using product indication to resolve ambiguities in design images.
Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15	Appellate intervention in multi-factorial infringement assessment only if error of law or principle.	Set the standard for appellate review of the judge’s infringement analysis.

Court's Reasoning and Analysis

The court undertook a detailed and careful analysis of the interpretation of the Registered Designs, infringement assessment, and the application of the grace period and priority date principles. It reconsidered the judge’s findings on whether certain registered designs depicted an integrated light and whether the images had dark backgrounds or dark-coloured bottles/liquids. Upon review of the images and physical products, the court concluded that the registered designs showed a clear bottle with clear liquid photographed against a dark background and that the designs UK 78 and UK 80 do show an integrated light, consistent with UK 82 and UK 84.

Regarding the grace period, the court agreed with the judge that disclosures by the designer during the grace period must be disregarded for both validity and infringement purposes to avoid defeating the grace period’s rationale, despite the absence of explicit statutory provision for infringement. The court endorsed the interpretation that the grace period protects disclosures of the registered design and any designs that do not produce a different overall impression.

On the date of assessment, the court upheld the judge’s approach that the overall impression of the Registered Designs should be assessed as at the priority date, rejecting arguments that it should be the filing date. The priority date is relevant to both validity and infringement because it affects the overall impression.

The court applied the established four-stage approach to infringement assessment, considering the relevant sector, the informed user, the designer's degree of freedom, and the overall impression comparison. It accepted the judge’s assessment that the Defendant’s products and the Registered Designs produce the same overall impression on the informed user, despite minor differences such as branding and decorative details. The court found no error in principle or law in the judge’s multi-factorial evaluation or his weighting of bottle and stopper shapes, which were part of the design corpus.

Holding and Implications

The court DISMISSED THE APPEAL, affirming the order granting relief for infringement of the Registered Designs.

The decision confirms that in design infringement cases under the Registered Designs Act 1949, the grace period protects the designer's disclosures from affecting both validity and infringement assessments, and that the overall impression is to be assessed at the priority date. It reinforces the objective approach to interpreting registered designs, including reliance on product indications and physical embodiments to resolve ambiguities. The ruling upholds the established multi-factorial methodology for infringement assessment and clarifies the limited scope for appellate intervention absent errors of law or principle. No new precedent was set beyond the application of existing legal principles to the facts.