M&S light up gin

Source: M&S

M&S’s ‘Light Up’ gin liqueur

Aldi has lost again in its battle with M&S over a light-up gin liqueur, with an appeal by the discounter dismissed.

The Court of Appeal has upheld a decision by the High Court that Aldi infringed M&S’s registered designs for a range of gin-based liqueurs.

The Intellectual Property Enterprise Court – a division of the High Court – found in January last year that Aldi’s version of the product did not create a sufficiently different overall impression to M&S’s, a test applied in design infringement claims.

In the appeal judgement handed down this morning, Lord Justice Moylan said the IP Enterprise Court judge had “made no error of principle in comparing the overall impressions of the Aldi products with those of the registered designs, and his conclusion was one that he was fully entitled to reach”.

Aldi Infusionist gin

Source: Aldi

Aldi’s design infringing ‘Infusionist Small Batch’ gin liqueur

An M&S spokesman said: “We love to innovate for our customers and we’re proud of our suppliers who help us bring exciting new products to market every year.

“That’s why we take intellectual property seriously and will always defend our rights against infringement – companies that seek to copy rather than innovate harm hundreds of small suppliers who have invested in innovation to grow their business.”

An Aldi spokeswoman said: “We are disappointed with this judgement and are considering our position, as we still believe there is no merit in the case put forward by M&S. We will continue to innovate and develop exciting, high quality products for our customers.”

Richard May, partner at law firm Osborne Clarke, called the latest judgement “the right decision”. 

“It emphasises that registered designs are a very useful form of protection against lookalike products and rights holders can achieve success with the right case,” said May.

Read more: How discounters are getting away with copycatting food brands

Louise Popple, senior counsel at Taylor Wessing, said: “The decision is a significant victory for M&S, not just against Aldi but all who produce look-alike products.

“Anyone who compares the designs won’t be surprised by this outcome. Nonetheless, these types of cases are never an easy victory for brand owners. Here, the depiction and description of M&S’s design registrations were picked over by Aldi but ultimately the Court held that they were clear.

“It helped M&S here that its bottle design was novel, that Aldi’s design was close and that there was no reason why Aldi should get so close.” 

John Coldham, IP partner at Gowling WLG, said registered design protection was an “under-used weapon in the fight against copycat products”. 

“I hope it reminds brand owners to consider design law more carefully when developing their brand protection strategies,” Coldham added. 

It is the latest in a long list of disputes involving Aldi over copycat claims. A trademark infringement claim by Thatchers Cider against Aldi was dismissed in High Court last month.

In 2021 Aldi reached a confidential out of court agreement with M&S in a dispute over alleged similarities between caterpillar cakes sold by the two retailers. A new version of Aldi’s Cuthbert the Caterpillar returned to stores in June last year.

In 2020, Brewdog teased Aldi on Twitter over similarities between its ‘Anti-Establishment’ beer and the brand’s Punk IPA. BrewDog’s CEO James Watt said the brand would launch a new beer called ‘BrewDog Aldi IPA’ and send some to the supermarket. The product later launched in Aldi stores.

In 2019, Aldi redesigned the packaging of its Italian-style chicken sausages after Heck owner Andrew Keeble accused it of mimicking the brand’s chicken Italia sausages.

Aldi was also accused of copying by Yoghurt maker The Collective in 2018

Meanwhile Lidl – also no stranger to copycat claims – is in a high-profile trademark battle with Tesco. A hearing took place last week in Tesco’s appeal against an earlier High Court decision that its Clubcard Prices logo infringed Lidl’s trademark rights.