In Great Britain, the well-known store Marks and Spencer (M) filed an infringement lawsuit against Aldi Stores (A) on the basis of its Registered Designs for gin bottles containing gold flakes and an integrated light.
The English judge granted the infringement claim and issued an order granting M damages for infringement. The appeal of A was dismissed, too.
Although there were a number of bottles in the so-called botanics shape prior to the Registered Design of M, there was no bottle with the three elements: (i) “botanics” shape – (ii) internal light – (iii) gold flakes. The judge found that although designers of A had considerable freedom in their choice of bottle shapes to consider, they chose to market a bottle that shared the three essential elements, plus others that accentuated the similarity.
In essence, the judge considered as cause of possible confusion the fact that bottle of A had a cap of identical shape to that of M, the “snow” effect of the flakes, the integrated light and, on the label, similar winter scenes consisting mostly of silhouettes of trees.
Certain differences (shade of the cap, non-identical images on the label) were considered to be relatively minor details which do not affect the impression of similarity produced by the above elements taken together.
Although A had its own trademark on both the gin and the designs on its bottle, it was not considered a discriminating element.
This case demonstrates the advantages of Registered Design protection. In particular, in this case the trademark was not sufficient to avoid the risk of confusion. The case is a reminder that too small changes made to a Registered Design do not protect against possible infringement lawsuits.