M&S legal win is new ‘line in sand’ for copycatting

M&S’s High Court victory over Aldi’s lookalike gin liqueur could draw a new ‘line in the sand’ for discounter copycats, IP lawyers have said.

Aldi was last week held by the High Court to have infringed M&S’s registered designs for a range of gin-based liqueurs.

Because M&S’s claim was design infringement, the test was whether Aldi’s products created a sufficiently different overall impression.

It’s a different test to that applied in trademark infringement claims, such as that filed by M&S against Aldi over a caterpillar cake in 2021, and later settled out of court. This can depend on establishing customer confusion, which can be harder to prove.

Though Aldi plans to appeal, brands would likely follow M&S’s example by registering detailed designs, IP lawyers said. They are likely to receive similar protection in the courts, potentially even shifting the boundaries on what Aldi can get away with in copycat versions.

“With the memory of the battle of Colin and Cuthbert the caterpillar cakes still fresh, this should send a warning that a line in the sand is forming,” said Mark Caddle, partner and trademark attorney at IP firm Withers & Rogers.

“This will reassure registered design owners that the courts will protect their product innovation,” he added. “Registered designs of packaging are often forgotten in food & drink IP strategies, but this case shows their value.”

Read more: How did M&S manage to beat Aldi on copycat claims this time?

Chris Morris, brand expert at IP attorneys HLK, said: “This win for M&S may prompt other brand owners to take the fight to Aldi. It will be fascinating to see whether Aldi and other discounters begin to retreat from using lookalike packaging as a visual shortcut for consumers.”

However, John Coldham, IP partner at Gowling WLG, warned that brands must act fast, as only designs less than a year old can be registered.

“Can brands suddenly do this as an extra thing in their armoury? Yes, but only for new stuff,” Coldham said. 

Commenting on the ruling last week, Aldi said: “We are disappointed with this judgement and will be appealing the decision. Aldi is committed to offering customers the highest quality products, at the lowest possible prices.”