M&S is seeking a High Court injunction restraining Aldi from further alleged infringement of its protected designs. It also wants an order for Aldi to destroy or hand over anything constituting a potential breach of the injunction and an inquiry into damages arising from the alleged infringement.
In court papers, M&S argues the designs of Aldi’s gold flake clementine gin liqueur and gold flake blackberry gin liqueur are “strikingly similar” to its own.
The papers include registered design images of M&S Light Up gin. A list of features M&S says are protected include the shape of the bottle, an integrated light feature, gold leaf flakes and a winter forest graphic.
M&S has also provided a number examples of comparisons made in the press between the two products, which it says support its claim.
It follows ‘Caterpillargate’, which began trending as a hashtag on Twitter in April after M&S launched a claim against Aldi over alleged similarities between its Colin the Caterpillar cake and Aldi’s Cuthbert.
Aldi has teased M&S on social media over that High Court action, which is ongoing, using a #FreeCuthbert hashtag. The discounter had another dig with its Christmas ad, which keen-eyed viewers spotted shows Cuthbert being arrested in the background of a scene.
“M&S has a proud history as a leading British innovator and for over 136 years customers have turned to M&S for unique, original, quality products – conceived, created and developed by us working with our trusted suppliers and produced to the highest standards,” said an M&S spokesman.
“We’ve introduced many firsts to the UK – the first chilled chicken kiev, the introduction of pre-packed sandwiches, glitter gin globes, the first and only retailer to sell 100% RSPCA Assured milk and of course our character products. So, like many other UK businesses, large and small, we know the true value and cost of innovation and the enormous time, passion, creativity, energy and attention to detail that goes into designing, developing and bringing a product to market and building its brand over many years.
“Our customers have confidence in our products because they trust our quality and sourcing standards, so we will always seek to protect our reputation for freshness, quality, innovation and value – and protect our customers from obvious copies.”
John Coldham, IP Partner at law firm Gowling WLG, said: “M&S is taking a forthright approach to protecting its IP this year, against Aldi in particular. We have seen a number of clients choose to challenge Aldi’s aggressive approach to taking inspiration from others, and M&S is doing the same. The huge press interest in the earlier dispute between M&S and Aldi about chocolate cakes called Colin and Cuthbert has not deterred M&S from taking action again.
“This case is about design rights, a commonly forgotten but very effective IP right in protection against copycats. Most cases against Aldi are settled before trial, but with some notable exceptions, with Aldi having won and lost some high-profile disputes in recent years. M&S will be hoping that its strong action against Aldi will discourage further copycat products and allow M&S to retain distinctiveness and return on its investment in new product development.
“Meanwhile, Aldi will perhaps be hoping that another dispute with M&S will raise its profile with its target market yet further. It may take a while to declare a true winner in this one.”