“Social media your way out of this one, Aldi,” was one lawyer’s comment on yesterday’s High Court ruling. It marked a watershed moment in the discounter’s latest copycat dispute with M&S – one that has gone in a very different direction from Cuthbert the Caterpillar. 

The Intellectual Property Enterprise Court – a division of the High Court – ruled Aldi Infusionist gin liqueur amounted to an infringement of M&S’s protected designs.

The ruling could result in Aldi having to hand M&S damages and an account of its profits from the infringing product. It could also face an injunction that prevents its sale in future.

It’s a far cry from the more well-publicised intellectual property dispute between the two retailers, in which M&S accused Aldi of copying its trademark Colin the Caterpillar cake. That ended in an out of court agreement between the two last year. Whatever the agreement was, it didn’t stop Aldi ridiculing M&S’s action on Twitter (and even in its Christmas ad), nor from selling its Cuthbert the Caterpillar cake again.

A number of intellectual property claims against Aldi have ended similarly, in an out of court agreement. So M&S’s latest triumph is significant. It is thought to be only the second such defeat for Aldi in the High Court – the other being in a dispute with make-up brand Charlotte Tilbury in 2019.

So how did M&S manage to win this time?

Part of it was the nature of the claim. M&S claimed Aldi had infringed the registered designs of its ‘Light-Up’ gin liqueur range. In that respect, the case was distinct from the caterpillar cake one, in which M&S claimed trademark infringement.

“The tests [for trademark and design rights infringement] are different,” says Carolyn Pepper, partner at Reed Smith. A legal test related to trademark claims is whether the copycat product amounts to ‘passing off’ by confusing shoppers into thinking it is the genuine article.

But where infringement of registered designs is concerned, the test is whether the copycat product “creates a different overall impression”, adds Pepper.

The court papers show M&S went to some trouble and detail in registering its designs, including multiple photographs of bottles, rather than artwork alone.

According to David Pearce, UK & European patent attorney at Barker Brettell Intellectual Property, this is significant. “The lesson from this seems to be that sometimes it is best just to register a design for the actual thing itself, and not try to be too clever about generalising it,” Pearce tweeted this morning. “Photographs can sometimes be the best way to do this.”

Aldi relied on having the words ‘The Infusionist Small Batch’ on its bottles as a point of difference. But because the test related to the overall impression created by the design, this was deemed not enough by the court.

“I think what this shows is the real value of registering designs,” says Pepper. “Aldi’s product didn’t create a different overall impression from the M&S product, and this is an example of good registration processes by M&S.

“M&S have shown good judgement in registering the design of the products,” she adds. “They’ve kept good records of their design process, which really tends to help.”

It’s a case designers would be well advised to look at “when considering whether or not they are actually creating a different overall impression [from a registered design] with a product,” adds Pepper.

“There aren’t huge numbers of cases on this subject and the ruling runs through the law in this area and makes it clear what a court will look at when deciding if something has got too close.”

One thing is for sure: Aldi lawyers will be among those poring over the ruling. After all, mimicking brands is a key part of the business model that has helped the discounter grow into the UK’s fourth-biggest supermarket. It is even in its advertising slogan: ‘Like brands, only cheaper’.

Given how much is at stake, it’s unlikely to hold back resources in establishing exactly where the boundaries lie and how far they can be pushed.

No wonder the discounter plans to appeal.

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