In
Following the well-known Colin v Cuthbert case of 2021,
Background
In this case, M&S argued that
Images used in the court judgement.
Legal principles
A registered design is infringed where another design does not produce a different overall impression on the informed user to that produced by the registered design. M&S believed five of their
The court followed the principles laid down in a previous case, which were that in assessing the individual character of a registered design compared with an accused design, the court must:
- establish the relevant sector to which the products belong;
- identify the informed user and assess their awareness/ attention to the design;
- decide the designer's degree of freedom in developing their design, ignoring features that were dictated by technical function; and
- compare the two designs.
Decision
The court assessed whether the M&S bottle clearly displayed the features subject to design rights and whether a consumer was given a different overall impression by
The court determined that an informed user would note that the following were features that the two designs had in common:
- the identical shapes of the bottles;
- the identical shapes of the bottles' stoppers;
- a snow effect in the case of two of the registered designs; and
- an integrated light in the case of two of the registered designs.
The court stated that "each of those similarities would appear significant to the informed user and cumulatively they would be striking".
The court also assessed the differences between the parties' bottles. These included:
- the different winter scenes;
- the branding ("The Illusionist" on
Aldi's bottle); - the branding which gave
Aldi's bottles a front and back; - the winter scene on
Aldi's bottles was brighter; and - the stopper on
Aldi's bottles had a watch strap label with the "Aldi " logo on the top and were darker in shade than the M&S bottles.
Despite these differences, the court concluded that the common features of the registered designs and
Images used in the court judgement.
In
An important issue considered was that disclosures made during the grace period - a 12-month period which allows the designer to test products with the design in-market before deciding whether it is desirable to apply to register the design - should be disregarded in assessing the "design corpus" for infringement purposes. However, this exception doesn't apply to any variations of what becomes the registered design. Therefore, if a designer tests several distinct designs, but only decides to register one, then they must accept the risk that the other designs may in some cases affect the scope of protection of the registered design.
The Court of Appeal also confirmed that the date at which the overall impression of the two designs should be assessed for both validity and infringement was the priority date, not the filing date of the design, because it affects the overall impression of the registered design.
Comment
The case acts as a reminder of the importance of securing necessary rights for intellectual property portfolios and the benefit of enforcing these rights against an infringer. The clarification by the
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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