Out-Law Analysis 5 min. read
14 Mar 2022, 10:41 am
While shapes, colours and other non-traditional packaging elements, which form an important part of the attractiveness of a product, can theoretically be protected by trade marks, in practice, obtaining these is often an uphill struggle for brand owners, who must be able to show that these marks depart significantly from norms and customs in their trade sector and that the elements for which protection is sought are capable of indicating origin. Accordingly, applications for non-traditional trade marks can be a lengthy and costly process, with no guarantee of success.
Design registrations, by contrast, are relatively quick and easy to obtain. While the duration of protection of design rights is limited compared to trade marks, which can be renewed indefinitely, they are a valuable IP right to enforce against competitors who may take inspiration from a successful and aesthetically pleasing product.
The drinks industry is one that invests heavily in novel and creative packaging as part of both the image and marketing strategy for its drinks, particularly at the premium end of the market. This is particularly evident at peak gifting times – over the festive period, and in the summer – when consumers are likely to be seeking innovative and unusual products. Filing for registered design protection for elements of product packaging, in particular those that are seasonal or otherwise likely to change over time, is a worthwhile and fundamental step in the product design and development process.
For many brands, registered design rights are an important part of their product protection strategy. This can be seen, for example, in a case currently before the High Court in London, where UK retailer Marks & Spencer (M&S) has alleged that rival Aldi, the German discount chain, infringed five of its registered designs by selling gin liqueurs in light-up bottles containing edible gold flakes, which produce a ‘snowglobe’ effect when the bottle is shaken.
Design rights are aimed at protecting objects which, although new and individualised, are intended for use and mass production. Although there is some overlap, design rights can be distinguished from copyright – which is intended to protect creative works and arises automatically – and trade marks – which are signs, symbols and other features which are intended to signify origin and to distinguish the goods and services provided by one business from those provided by others.
While the duration of protection of design rights is limited compared to trade marks, which can be renewed indefinitely, they are a valuable IP right to enforce against competitors who may take inspiration from a successful and aesthetically pleasing product
Registered designs must have “individual character”, but need not necessarily be of artistic merit. More limited protections apply to unregistered designs.
While, for brands, trade marks and copyright are core weapons in the arsenal against competitors and potential infringers, they often cannot protect a design’s look and feel – as is the case with the M&S light-up gin bottle. Registered design protection, on the other hand, can be comparatively quickly and cost-effectively obtained to protect and reinforce investment in creative packaging design.
On 3 December 2021, M&S filed a claim with the High Court seeking an injunction against Aldi, that included a request for seizure or destruction of the offending products and damages. M&S alleged that Aldi had been promoting since October 2021, and selling since November 2021, gold-flake gin liquors in bottles which “constitute designs which do not produce on the informed user a different overall impression to the [M&S] designs”.
Four of the M&S designs, which were registered in April 2021, protect light-up gin bottles with particular features: a bell-shaped bottle with stopper; an integrated light feature and the visual impact of that feature; gold leaf flakes; and a winter forest silhouette graphic and the position of that graphic. A fifth registered design protects the particular winter forest silhouette graphic used.
Aldi, whose ‘The Infusionist’ clementine and blackberry gin liquors retailed for £6 less than the M&S products, has denied the allegations. Among its defences are that the shape and contours of the bottle and its stopper, as well as the presence of gold-flake leaf, are “commonplace”, citing examples of similar products offered by other brands. Other elements, including the location of the light source at the base of the bottle, are governed by the “technical practicalities and constraints” of the design. Aldi’s detailed defence also picks out the differences between the colours and logo placement on the bottles, the creatures featured in the woodland scene and the overall ‘busyness’ of the designs.
Both retailers also refer to press coverage and social media posts comparing the two products in their pleadings. However, while M&S claims that the articles and posts provide evidence of the “marked similarity” of the products in the eyes of the “informed user”, it is Aldi’s view that the authors are “well aware” that the products are different. “The fact that the products are described as ‘similar’ does not equate to them producing the same overall impression on the informed user,” Aldi said.
While, for brands, trade marks and copyright are core weapons in the arsenal against competitors and potential infringers, they often cannot protect a design’s look and feel
The case comes after a separate action brought by M&S against Aldi in April 2021, alleging that Aldi’s Cuthbert the Caterpillar cake was a copy of its well-known Colin the Caterpillar cake. The dispute was settled after the retailers reached a confidential agreement in February of this year.
As can be seen from the M&S pleadings, and Aldi’s response, cases like these raise interesting questions about the scope of protection offered by registered design rights and how damages, where relevant, should be awarded.
Within a more complex design, like the gin bottles in this case, some elements of that design – such as the shape of the bottle or stopper – may arguably be common in the relevant market, and should be free for use by all. Other features of the design may be dictated by technical constraints and design freedom. Where this is the case, registration for a complex design may be interpreted as only having a narrow scope of protection, where infringement effectively boils down to whether “informed users” – consumers, as defined by the law – would consider the designs to be similar and whether the allegedly infringing product produces a different overall impression.
Another intriguing point to consider is whether the design of the bottle, rather than its contents, is the element that attracts the consumer to make a purchase – or, as a discount retailer may argue, the difference in price. Quantifying the damage done to a brand and accounting for lost profits in an objective manner may be difficult when multiple factors are likely to have influenced the purchasing decision: ultimately, only the loss that is incurred due to the alleged infringement should attract damages.
As with the case of Colin and Cuthbert the caterpillar cakes, this dispute may ultimately be settled in advance of a court hearing, leaving these questions unanswered. Regardless, however, the dispute shows the utility of holding a registered design right and the opportunities for enforcement – and the cost and efficiency benefits of obtaining such registered design rights as compared to other brand protection tools.
Co-written by Sarah Jeffery of Pinsent Masons.
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