Registered Designs - The Appeal in Marks and Spencer Plc v Aldi Stores Ltd

Court of Appeal (Lords Justice Lewison, Moylan and Arnold) Marks and Spencer PLC v Aldi Stores Ltd [2024] EWCA Civ 178 (27 Feb 2024)

This was an appeal against the relief granted to Marks and Spencer Plc ("M&S") by His Honour Judge Hacon for infringement of the above-registered designs by Aldi Stores Ltd. ("Aldi") for the reasons set out in Marks and Spencer Plc v Aldi Stores Ltd. [2023]EWHC 178 (IPEC) 31 Jan 2023 which I discussed in Registered Designs - Marks and Spencer Plc v Aldi Stores Ltd. on 20 Feb 2023.  Aldi appealed on 7 grounds with the permission of Judge Hacom and Lord Justice Arnold while M&S raised another in a respondent's notice.  The appeal came before Lord Justices Lewison, Moylan and Arnold on 23 Jan 2024 who handed down judgment on 27 Feb 2024.   By para [64] of his judgment in Marks and Spencer PLC v Aldi Stores Ltd [2024] EWCA Civ 178., Lord Justice Arnold dismissed the appeal.  Lord Justices Moylan and Lewison agreed.

The Dispute

Lord Justice Arnold said that registered designs 6134278, 6134280, 6134282 and 6134284 protect the packaging of a range of gin-based flavoured liqueurs one of which is clementine for the Christmas market that M&S introduced in the autumn of 2020. Ir consists of a festively decorated bottle containing edible gold flakes which become suspended in the liquid when the bottle is shaken, thereby producing an appearance akin to that of a golden snow globe. At the base of the bottle, there is a light-emitting diode which, when turned on, illuminates the contents of the bottle, and in particular, the gold flakes if they had been shaken up. 

The next year Aldi launched a rival gin-based range sold in a decorated bottle containing gold flakes and an LED that included clementine and blackberry though they were sold in bottles with differently-coloured decoration:

M&S complained that Aldi had infringed its registered designs by marketing and selling gin liqueurs in the above bottles.  By para [84] of his judgment, Judge Hacon held that Aldi had infringed M&S's designs by marketing its liqueurs in those bottles.

Grounds of Appeal

Aldi appealed on the following grounds:-

1. The judge was wrong in law to hold that disclosures by the designer of the registered design during the grace period were to be disregarded when assessing infringement as opposed to validity.
2. Even if disclosures of the same design or disclosures of designs which do not produce a different overall impression were to be disregarded, the judge was wrong to hold that all disclosures by the designer are to be disregarded.
3. It was procedurally unfair for the judge to hold that the overall impression of the registered designs should be assessed at the priority date because it was common ground between the parties at trial that the date of assessment was the filing date.
4. The judge was wrong in law to hold that the overall impression of the registered designs should be assessed at the priority date,
5.  If Aldi were to succeed on grounds 1 or 2 or 3 or 4, additional designs would have become part of the design corpus, which would have required reconsideration of the overall impression created by the registered designs, which in turn would have affected the infringement analysis.
6. The judge gave no reasons for concluding that registered designs numbered 6134282 and  6134276.
had "images created against a dark background" and was wrong to do so.
7. The judge had fallen into error by not properly considering the impact of the absence of the snow effect and the integrated light on the comparison with respect to the registered designs which did not include those features and by giving undue weight to the shapes of the bottles and stoppers, particularly given that the shape of the bottle was protected by a third party registered design and that the design corpus included bottles with similar stoppers.

The Respondent's Notice

M&S contended that the judge was at least entitled to find that 6134282 and 6134276. had dark backgrounds but if the Court of Appeal was to reconsider that finding, then it should reconsider the judge's finding that 6134278 and 6134280 did not show a light. It pointed out that the judge gave no more reasons for reaching that conclusion than he did for concluding that 6134282 and 6134276 had dark backgrounds. Aldi did not challenge the judge's finding that 6134282 and 6134284 did show a light.

Ground 6 and the Respondent's Notice

Lord Justice Arnold considered ground 6 and the respondent's notice together  In both cases, the issue was whether Judge Hacon had interpreted the designs correctly.

Referring to para [30] of Lord Neuberger's judgment in Magmatic Ltd v PMS International Group plc [2016] RPC 11, [2016] 4 All ER 1027, [2016] ECDR 15, [2016] Bus LR 371, [2016] UKSC 12, [2016] WLR(D) 126, Lord Justice Arnold directed himself that the scope of protection of a registered design depends on the proper interpretation of the registration, and in particular of the images included in that registration.  Recalling para [55] of the Court of Justice of the European Union's judgment in Case C-488/10 Celaya Emparanza y Galdos Internacional SA v Proyectos Integrales de Balizamiento ECLI:EU: C:2012:88, EU: C:2012:88, [2012] EUECJ C-488/10, he added that the design must be interpreted objectively and that the circumstances about the conduct of the proprietor of the design, and by extension the intention of the designer, are irrelevant.  Where, as in this case, the images of a registration consist of photographs of a product, the claimed design will be the features of the product that are visible in the photographs, that is to say, any visible "lines, contours, colours, shape, texture, materials and/or ornamentation."

Because Judge Hacon had not given reasons for his findings that registered designs 6134282 and 6134276.
had "images created against a dark background" or that 6134278  and 6134280  did not show a light, Lord Justice Arnold thought it necessary for the Court of Appeal to reconsider both findings.

His lordship's first task was to consider whether 6134282 and 6134284 showed a dark-coloured bottle and/or a dark-coloured liquid, as Aldi had contended, or a clear bottle filled with a clear liquid photographed against a dark background, as M&S had contended.   He viewed those images online where it was possible to see the images more clearly than on paper and on an enlarged scale. He concluded that M&S was correct.  He then considered whether 6134278  and 6134280 showed a light and found that they did. 

His conclusion on both of these issues was confirmed by inspecting examples of M&S products.  Judge Hacon had said that products manufactured by the proprietor to which a design has been applied were irrelevant to the interpretation of the design but the Court of Justice held in Case C-281/10 PepsiCo Inc v Grupo Promer Mon Graphic SA [2011] EUECJ C-281/10, EU: C:2011:679, [2012] FSR 5, ECLI:EU: C:2011:679 at para  [73] that "it is not mistaken, in the assessment of the overall impression of the designs at issue, to take account of the goods actually marketed which correspond to those designs."  It added that it is certainly permissible to use the products "to confirm the conclusions already drawn" from the designs.  In both Proctor & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] FSR 8 and Dyson Ltd v Vax Ltd [2011] EWCA Civ 1206, [2012] FSR 4 the Court of Appeal had regard to physical embodiments of the designs in issue:

Lord Justice Arnold's conclusion on whether 6134278  and 6134280 showed a light was reinforced by the description "Light up Gin Bottle."  After considering  Case R 1421/2006-3 Casio KKK (unreported, 5 July 2007) at [19]-[22] and Case T-9/07 Grupo Promo Mon Graphic SA v Office for Harmonisation in the Internal Market [2010] ECR II-981 at [66]-[70] (affd. Case C-281/10 P [2011] ECR I-10513) the learned lord justice opined that at least in a case such as the appeal before him, the indication of product could be relied upon to resolve ambiguity as to what is shown in an image, and in that sense to assist in the interpretation of the design  He added that the statement that the product to which the designs are intended to be applied is a "light up gin bottle" provides an unambiguous answer to the question whether the designs showed a light.

His lordship considered the judge's approach to the assessment of infringement between paras [23] and [28] of his judgment and summarized his assessment between [29[ and [39].   In para [39] he quoted paras [80] to [83] of Judge Hacon's judgment in which the learned judge compared the similarities and dissimilarities between the registered designs and Aldi's bottles.

Ground 1

Judge Hacon had said at para [61] of his judgment:

"If one assumes that the test of overall impression in relation to any one registered design will invariably be identical for both validity and infringement, the answer must be that the grace period does apply in the context of infringement."

He added at [64]:

"If the designer's disclosure or disclosures during the grace period formed the bulk of designs in the relevant sector made available before the application (or priority) date, this would provide no barrier to a registered design being treated as new and having individual character as of that date. But if those earlier disclosures were to be considered relevant to the assessment of infringement, the protection could be reduced to a narrow scope, liable to be insufficient to cover very similar designs of competitors inspired by the designer's earlier disclosures. The rationale of the grace period would be substantially defeated. It seems to me, therefore, that the design corpus to be considered when assessing infringement excludes the designs disclosed by the designer during the grace period. This is also consistent with the assumption referred to in paragraph 61 above (see Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2006] EWHC 3154 (Ch), at [26])."

Aldi argued that as s.1B (6) (c) of the Registered Designs Act 1949 provides that a disclosure during the grace period is to be disregarded when assessing novelty and individual character for the purposes of determining registrability of a design, and as there is no corresponding provision which applies to the assessment of infringement., it followed that it would be illegitimate to exclude such disclosures when considering infringement.

Though he acknowledged the force of that argument, Lord Justice Arnold was not persuaded by it.  He agreed with Judge Hacon that the purpose of the grace period would be substantially defeated if disclosures by the designer during the grace period were relevant when considering infringement. Although they would not prejudice the validity of the registered design, they would reduce its scope of protection, potentially to nil which cannot have been what the legislature intended.

Ground 2

Judge Hacon said at para [66] of his judgment:

"Going back to the rationale for the grace period identified in Sphere Time, it will commonly be the case that a party wishing to see whether its design is a commercial success, before going to the expense of applying for a registered design, will make and disclose successive iterations in the course of the design's development before finding the most successful iteration and registering that design. There were three possible intentions of the European legislature at the time the rule of the grace period was created. The first was that in such a case the party would be obliged to apply to register every iteration, including all the failures, in order to be protected. The second, proposed by David Stone, see European Union Design Law, 2nd ed., at paras. 10.110-111, was that the rule protects the designer from adverse consequences of any disclosure by him (or a successor in title) during the grace period of (a) the registered design or (b) any design which does not produce a different overall impression to that of the registered design. The third was that a disclosure by the proprietor of any design at all in the grace period does not count as a prior disclosure. Mr Stone indicates that this has support from a decision of the OHIM Invalidity Division (Stone at para. 10.112-113) and is likely to be the correct interpretation of art 7 (2)."

Aldi submitted that the correct interpretation was the first one or alternatively the second while M&S contended that the third interpretation was the correct one or alternatively the second.   

Lord Justice Arnold rejected the first interpretation,   He said in para [52] of his judgment that it could not be correct having regard to the purpose of the grace period.    If a designer was only protected against disclosure of the same design or a design that differed only in immaterial details, and not against disclosure of a design that created the same overall impression, then the registered design would lack individual character if the disclosed design created the same overall impression and therefore would therefore not be valid.   He also rejected the third interpretation as it would protect a designer against disclosures which would not invalidate the registered design, or make it unenforceable, but which might in some cases indirectly reduce its scope of protection to some extent by virtue of their effect on the design corpus.    In his view,  the second interpretation was the correct one as it would protect the designer against invalidation, and against making the registration unenforceable, by disclosures during the grace period.

Ground 3

The question of whether the judge's assessment of the registered designs as at the priority date rather than the filing date as had been agreed by the parties was procedurally unfair depended on whether Aldi had been prejudiced by that action,  Lord Justice Arnold said that that would only be the case if it had affected the evidence or arguments at trial and there was no suggestion that it had.

Ground 4

Lord Justice Arnold held that there was no =reason why the judge should not assess the registered design aor the priority date though it would have been better to have raised the matter with the parties during the argument.

Ground 5

Even if additional designs had been added to the design corpus it would not have made a great difference to the overall assessment or the infringement analysis.

Ground 7

Judge Hacon made no error of principle in comparing the overall impressions of the Aldi products with those of the registered designs.  His conclusion was one that he was fully entitled to reach.

For all the above reasons, their lordships dismissed the appeal,   

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