Marks and Spencer has argued at the High Court that Aldi copied the look of its “Instagrammable” festive gin bottles. The retailer has sued its German rival for allegedly infringing the design of its “light up gin bottles” sold during Christmas 2020, whose “wow factor” it believes “got the nation talking”, the court was told.
The dispute comes in the wake of a now settled copyright row between the two retailers which saw M&S accuse Aldi of copying its Colin the Caterpillar cake.
M&S’s current legal challenge, first brought last December, alleges that Aldi’s 2021 gold flake blackberry and clementine gin liqueurs are “strikingly similar” to products for which it holds a registered design.
Lawyers for M&S claim there was a “straightforward” infringement of its registered designs, with Aldi and its own products producing “the same overall impression” on shoppers.
But Aldi, which denies infringement, contends that design features used by its rival were “commonplace” and “widely known across the sector”. Examples of the products at the centre of the case were brought to a one-day trial at a specialist intellectual property court in London on Friday, to show to Judge Richard Hacon.
What was said by M&S lawyers about the bottle design?
The bottles include buttons on their base to illuminate the contents. Daniel Selmi, representing M&S, said in written arguments that M&S and Aldi’s designs “have the same integrated light feature at the base of the bottle, the shape and contours of the bottle and the cork stoppers are the same, they both have gold leaf flakes, shown suspended, and they both have a winter forest silhouette graphic design”.
The barrister added: “Plainly they produce on the informed user the same overall impression. That is hardly surprising since Aldi wanted their product to ‘have the look and feel’ of M&S, and they succeeded.”
Mr Selmi said M&S’s designs were part of its “Gin Globes Project” that saw products first launched in 2019. The inclusion of a light feature was “a strikingly novel design choice” for 2020, he said, with the idea of incorporating it into the base of the bottle coming to a product developer who saw lighting shops on London’s Kensington High Street.
The 2020 products were “intended to be market-leading and a real first for consumers” and were “designed to be interacted with”, Mr Selmi said.
The lawyer said M&S believed the design was “very Instagrammable” and built on the popularity of the “gin boom”. He argued Aldi had not shown that any of the design features were widespread or commonplace. “The bottom line is that Aldi infringes,” he concluded.
M&S is seeking a High Court injunction restraining Aldi from further alleged infringement of its protected designs, an order for Aldi to destroy or hand over anything constituting a potential breach of the injunction, and an inquiry into damages arising from the alleged infringement.
What has Aldi said?
Thomas Elias, for Aldi, said in written submissions that it had been advertising and promoting its challenged products since October 2021 and selling them since the start of November last year.
He said M&S’s product designs “do not show… an integrated light source as claimed”, arguing that pictures “show light coming from underneath the bottles, suggesting the light source in the images is external to the designs themselves”.
Mr Elias added the “shape and contours of the glass bottle and cork stopper were commonplace”. The barrister said that by the time M&S’s designs were registered in April 2021, “both the integrated light feature, and the inclusion of gold flakes, were widely known across the sector”.
He added: “They would no longer have the ‘wow’ factor that would mark either of them out as a particularly significant design feature.” He also said the M&S designs “contain no branding”, while the Aldi bottles “are prominently branded with the words ‘The Infusionist Small Batch’. The hearing continues, with a ruling expected at a later date.