Naughty or Nice? Lessons from Intellectual Property infringers in 2023

As the festive period fast approaches, with marketing campaigns booming, it is more important than ever for companies to ensure they do not find themselves on the Naughty List.

The IP courts have been busy throughout 2023, from supermarket squabbles to whisky wars, but what lessons have been learned this year for businesses to consider if they want to stay on the Nice List?

It's Beginning to Look a Lot Like Gin-mas: Marks & Spencer PLC -v- Aldi Stores Limited

In early 2023, the Intellectual Property Enterprise Court in England (“IPEC”) handed down its judgment in the much-anticipated dispute between Marks & Spencer and Aldi over a light-up gin bottle. Both bottles had the same shape, suspended gold flakes, exterior decoration and lit up at the base. Marks & Spencer successfully claimed that Aldi’s cheaper version, Infusionist Gin, infringed four of its registered designs. This is an encouraging sign for the holders of registered designs, a group who remain in need of some Christmas cheer, shivering in the long shadow of the Supreme Court’s decision in Trunki.

A registered design is infringed where a product does not provide an informed user a different overall impression from that of the registered design. The court looked to the target market, the flexibility in design available to the producer and what already exists in the sector. In light of this, the court considered, in the shape, the stopper, and the decoration of the bottle, that no different overall impression could be taken. The court found that the lack of products on the market that were similar to the bottle strengthened Marks & Spencer’s claim of infringement, and that the light at the base was unique to that of others on the market.

Therefore, for brands seeking to tread in similar waters of their competitors, they must take greater care to avoid the Naughty List and a costly infringement process. Where the product in question is distinctly unique, as was the case here, the court will go further to protect the registered design.

Deck the Aisles with Discount Labels: Lidl Great Britain Ltd -v- Tesco Stores Ltd

In April, the High Court held that Tesco’s ‘Clubcard Price’ sticker infringed Lidl’s trade marks and copyright, and amounted to passing off.

Lidl have registered their blue mark, containing “LIDL” in the yellow circle (the “Mark”), but helpfully, also registered the blue and yellow mark without the LIDL wording included (the “Wordless Mark”). The court acknowledged that the “artistic quality” of the trade marks were not high, but nevertheless, time, labour and creativity had been invested over the years. For brands considering a similar mark to that of their competitor, this case highlights that the mark need not be complex in order to warrant protection. The simple and colour-blocked Wordless Mark was protectable, even with Tesco’s wording over-laid.

Lidl were also successful in gathering and using public opinion data via their own surveys and YouGov polls, that then demonstrated confusion on the part of the public. Much of the judgment explores the lengthy and reliable evidence of this kind provided by Lidl, which complimented their expert evidence well. Tesco were also found (and supported by survey data) to have passed off and taken unfair advantage of Lidl’s distinctive brand known for its value goods, given that Tesco Clubcard prices aimed to also depict cheaper goods by use of the sticker on shelves. This is a clear sign to brands not to undervalue the power of their customer base and market when at the face of a claim.

Do They Know its Whisky Time at All? D&M Winchester Ltd -v- Coleburn Distillery Limited

In August, the Intellectual Property Court of the Court of Session heard, for only the second time, an appeal from a decision of the UK Intellectual Property Office. Landlord and distillery owner, D&M Winchester Ltd raised the appeal to the Edinburgh court against Coleburn Distillery Limited, the operator of the distillery, under the right of appeal in the Trade Marks Act 1994.

The court was asked to consider the standard of review it itself should consider, before going on to analyse the use of the trade mark, identity/similarity of services, likelihood of confusion and bad faith. On the grounds required for successful defence against the appeal, Coleburn Distillery was successful, and the appeal failed.

For appellants seeking to move up the chain past the decision of the IPO, as D&M Winchester sought to do here, the court will only step in where there has been either an error of the law, or where the decision lies outside the bounds of reasonable disagreement. Therefore, as the second case of its kind affirming this in Scotland, it is clear there is a high standard to meet in order to have any prospect of success in this forum.

If intellectual property advice is on your Christmas wish list this year – our market leading team is here to help.