Why your business should register its design rights

In a world where visual identity can make or break a brand, the Marks and Spencer v Aldi case has brought design right infringement to the forefront of UK intellectual property law. This legal dispute revolves around allegations that Aldi copied Marks and Spencer’s premium gin packaging, specifically its distinctive “M&S Gin” bottles. The case highlights the critical importance of design rights in protecting unique product designs and maintaining brand integrity in an increasingly competitive landscape.

Setting the Scene  

In this case, M&S sought to rely on its UK registered designs to challenge Aldi’s competing gin-based flavoured liqueur product. M&S had registered four UK designs related to its unique light-up gin bottle, which features festive decorations and edible gold flakes. In response, Aldi launched a rival product in a similarly designed light-up bottle, also containing gold flakes. At first instance, the judge ruled that Aldi’s product infringed M&S’s registered designs, concluding that it did not create a different overall impression for the informed user – defined as a UK purchaser and consumer of spirits and liqueurs. While some differences between the products were noted, they were deemed minor and insufficient to alter this conclusion.

Aldi subsequently appealed the decision on various grounds. However, because the original ruling involved a detailed multi-factorial assessment, the Court of Appeal could only intervene if there had been an error in law or principle. Ultimately, the Court of Appeal agreed that no such error had occurred, reinforcing the high threshold for successful appeals in intellectual property infringement cases. The Court of Appeal therefore upheld Intellectual Property Enterprise Court’s decision that Aldi had infringed M&S’s registered designs of its snow globe light up gin bottle.

The Legal Framework

Design rights protect the appearance of the whole or part of a product, including lines, contours, colours, shapes, textures, and materials. In the UK, there are two types of design rights that businesses can rely on:

Registered Design Rights: These offer robust protection for the appearance of a product for up to 25 years, provided the design is registered with the UK Intellectual Property Office (UKIPO). This registration grants the owner exclusive rights to use the design and prevent third parties from doing so without permission (as demonstrated in the M&S v Aldi case highlighted above). Of course, an owner of a registered design has a stronger level of protection because the design owner has a registered certificate, making it easier to enforce rights in cases of infringement. You can stop others from using the design, regardless of whether they copied it or came up with it independently.

In cases of registered design right infringement, UK courts will typically look at whether the infringing product or design gives the same overall impression to an informed user as the protected design. If the designs are found to be too similar, the court may grant remedies that include damages, an injunction to stop further use of the infringing design, and sometimes, the destruction of infringing materials.

Unregistered Design Rights: These rights arise automatically without the need for registration and protect designs for up to 15 years from the creation of the design or 10 years from when the design was first made available for sale, whichever is shorter. However, this protection is more limited as it only safeguards against copying, not independent creation.

How We Can Help

At Herrington Carmichael, we understand the importance of design rights in maintaining your brand’s identity and competitive edge. The Marks and Spencer v Aldi case serves as a vital reminder for businesses to take proactive measures to protect their unique designs. Here’s how we can assist you in safeguarding your intellectual property:

1. Design Right Registration: We guide you through the registration process to ensure that your designs are fully protected under UK law. Early registration can prevent future disputes and offer you the strongest protection available.
2. Infringement Prevention and Monitoring: Our team can recommend monitoring services to help identify potential design infringements early on. If infringement occurs, we will help you enforce your rights quickly and efficiently.
3. Defending Against Infringement Claims: If your business is accused of infringing someone else’s design rights, we can help build a robust defence to protect your interests and reputation.
4. Litigation Support: Should your case escalate to court, our experienced litigators will represent your interests and build a robust case on your behalf.

Protecting your designs is crucial in today’s competitive market. The case law highlights the potential risks of design right infringement and the importance of being proactive in protecting your designs. We are dedicated to helping you navigate the complexities of registering and protecting your design rights.

For strategic advice on protecting your design rights or intellectual property law generally, please contact us to speak to a member of our Commercial Team.