17 February 2023


In Autumn 2020 M&S – the high street retailer and upmarket supermarket – introduced a line of gin-based liqueurs sold in festive-themed bottles, securing UK registered design protection for the bottle designs. The bottles featured a winter scene on their surface, gold flakes suspended in the liqueur, and included an LED light at their base that, when turned on, illuminated the contents of the bottle.

In November 2021 Aldi – the German discount supermarket, now one of the UK’s largest – introduced its own line of light-up gin liqueurs containing gold flakes in a bottle branded with the name ‘Infusionist’, which M&S claimed infringed its UK registered design rights.

Summary of the judgment

A registered design is infringed by another design if it does not produce a different ‘overall impression’ on the informed user than that of the registered design. The factors taken into account include:

1. The relevant sector; in this instance the UK’s spirits and liqueurs market.

2. The typical user of the product, their awareness of earlier designs, and their level of attention in comparing the designs. Here the typical user was a member of the UK public who purchases and consumes spirits and liqueurs and has a relatively high degree of attention.

3. The degree of freedom afforded to the designer in developing the design. In this case the variety of gin products available on the market and the wide range of different shapes for gin bottles were clear evidence that designers enjoyed considerable freedom, particularly around the shape of the bottle and the design printed on it.

4. The comparison between the registered design and the allegedly infringing design – taking into account the above factors – and the overall impression created by the designs, ignoring the features of the design which are purely functional and acknowledging that the typical user may attach different degrees of importance to similarities or differences in the designs depending on their practical significance and extent to which the particular feature is seen in use.

Aldi did not file a counterclaim challenging the validity of M&S’s design registrations but did argue that numerous elements of M&S’s designs were solely dictated by technical function and should therefore be discounted from the assessment of overall impression because they were not eligible for design protection. Aldi also sought to emphasise the differentiating elements between the designs at issue, namely the ‘Infusionist’ branding on the bottle, the choice of different decorative winter scenes, and that Aldi’s bottle stoppers were darker in colour and featured a strap label featuring the Aldi logo.

The Court took a different view, holding that each of (i) the use of gold flakes scattered throughout the liquid when the bottle was shaken, (ii) the placement of the LED light source at the base of the bottle, and (iii) the clear upper portion of the bottle, were all “aspects or consequences of aesthetic choices made by the designer” and not a response to any technical constraints. They were therefore valid elements to be considered when comparing the designs.

Assessing the impression created by the respective designs, the shape of the bottles in question was found to be particularly unusual, playing a significant role in the overall impression created by the designs – particularly given the lack of similar shaped bottles being employed elsewhere in the market. The presence of additional similar elements, such as the identical shape of the bottle stoppers, the winter scenes depicting tree silhouettes along the straight sides of the bottles, the snow effect, and the integrated LED light, were found to be cumulatively striking. Any differences between the bottle designs (such as the ‘Infusionist’ branding employed on Aldi’s bottles, which had no counterpart on M&S’s registered designs) were deemed minor and insufficient to create a different overall impression. Aldi’s bottles infringed M&S’s registered designs.

Key takeaways

The judgment is an important reminder that registered designs provide are a valuable (albeit sometimes overlooked) IP right for product shapes and packaging, and that when comparing designs from an infringement perspective the key question is whether they convey an overall different impression, not whether individual elements of the designs are distinguishable . 

When launching new products to the market it is important to conduct clearance searches to mitigate the risk of a conflict with earlier design rights held by competitors. This is especially relevant where those design registrations held by third parties may be particularly striking and unusual in that market sector – the addition of a brand name alone may not be enough to provide a defence to design infringement, even if it is clearly identifiable.

This article was written by Amy Salter and Tedi Halili.

If you require assistance in relation to registering or challenging a design or other form of IP, or would like any further information, please contact Amy, Tedi, or Emily Roberts (Partner).

Subscribe to our Concept newsletter and receive the latest intellectual property legal updates, news and event invitations direct to your inbox.

Key contact

Emily Roberts

Emily Roberts Partner

  • Intellectual Property and Media
  • Intellectual Property Disputes
  • Intellectual Property Portfolio Protection

Subscribe to news and insight

Burges Salmon careers

We work hard to make sure Burges Salmon is a great place to work.
Find out more