Someone's got a new crush on Lind & Lime: Protecting your unique product design

BrewDog have yet again hit the headlines, as distillers Lind & Lime call them out on the similarities between the bottle for BrewDog’s new tequila and their distinctive gin bottle.

The dispute raises questions around how brands can protect their intellectual property (IP) rights, and in this blog we explore the different types of legal protection available to protect unique product design.

Background to the dispute

Following its launch earlier this month, the BrewDog tequila, Casa Rayos, garnered attention almost immediately due to its similarity to the bottle of Scottish gin brand, Lind & Lime. Lind & Lime is a distillery based at the port of Leith in Edinburgh, operated by Muckle Brig. It released its gin in 2018 and the distillery was opened in 2022. Upon becoming aware of the BrewDog bottle, Lind & Lime took to social media to call out the Aberdeenshire brewing giants.

BrewDog are no strangers to IP controversy, as readers of our previous blog from November last year will remember.

As far as we are aware, Lind & Lime are currently considering their options. BrewDog co-founder Martin Dickie has stated that Casa Rayos has been in development for over two years. They claim that rather than taking inspiration from Lind & Lime’s bottle, the design is based on agave leaves and the colour of the agave plant. They have also emphasised that “the colour, mould shape, contours, glass text, label size/placement, fonts, and embossed design are all different too…”, as well as the fact that it is a tequila and not a gin.

Lind & Lime have recently spoken to the media about the ‘misery’ of trying to protect the intellectual property in the distinctive bottle. Sure enough, the cost of IP litigation needs to be carefully considered. However, there are steps which can be taken to give product owners the upper hand against copycats.

Types of legal protection:

1. Unregistered rights

Provided that it is unique, the look of a product, or at least elements of it, will often have some form of inherent protection under the law. For example, artwork on labels and logos are commonly protected by copyright. The law of ‘passing off’ has also long been used by product owners to try and put a stop to those who seek to free-ride off of the unique get-up of a reputable product.

A lesser used right, however, is the unregistered design right. While much more limited than registered design rights (see below), the unregistered design right protects the shape and configuration of a functional product and prevents copying of it. The right is valid for the lesser of either (a) ten years from the first marketing of articles made to the design, or (b) fifteen years from the creation of the relevant design document. For something like the Lind & Lime bottle, where the shape of the bottle itself is what is unique, an unregistered design right could be sufficient basis for a claim against copycats.

As can be seen above, unregistered rights may in many cases be sufficient. However, the registration of a registered design or trade mark, can often significantly improve the extent of protection available.

2. Registered design

Unlike an unregistered design, which does not cover surface decoration, a registered design will protect lines, contours, colours, textures and patterns. To qualify for registration, the design must be novel and possess “individual character”.

Other benefits of registering your design include:

• Protection for up to 25 years (so long as the registration is renewed every 5 years).
• For infringement you must show that the competing design lacks novelty and ‘individual character’ – there is no requirement to show that the design was copied.
• Provides a warning to third parties that a design has been registered and is valued by its owner. It also provides a clear record of when the design was created, which can prove extremely useful for proving infringement.
• Assists with growing brand reputation and goodwill relating to the product.

Registration of a design is a short and inexpensive process. The cost starts from £50 for one design. An application can be made to the UK Intellectual Property Office (UK IPO) for UK and world-wide protection. Once successfully registered, the design is included on the journal of registered designs.

The decision to register should be taken quickly after creation of the design. A designer generally has a 12-month period from the date of first disclosure of their design in which to apply for registration of the design.

3. Trade marks

It is a common misconception that trade marks are only for use in logos and names of products. However, trade marks can cover packaging and shapes (including the shape of a bottle), provided they are sufficiently distinctive and not commonplace.

As with a registered design, the public element of a registered trade mark lays down a marker to copycats and provides a clear evidential record of when the protection begins. In addition, provided the mark is constantly in use and renewed every ten years, the protection can last indefinitely.

The benefits of registering a trade mark for the design of a product was clearly demonstrated in the action of William Grant & Sons v Lidl, in which Burness Paull acted for the successful Pursuer.

William Grant & Sons are the owner of a number of trade marks for the shape of the Hendrick’s Gin bottle, bearing a diamond-shape label, which is registered in class 33 for alcoholic beverages. Hendrick’s Gin is bottled in a dark brown/black and opaque, apothecary-style bottle bearing a diamond-shaped label. This trade mark proved to be effective in allowing William Grant to secure an interim interdict to protect its well-known bottle shape.

Importance of brand protection

Protection of your brand and products is essential in safeguarding the reputation and success of your brand in the wider market. As demonstrated above, we would recommend making any relevant applications to have your design registered to reduce the risks of having your brand copied. After all, the cost of making an applicable is inexpensive.

If you are considering making an application for registering your design and/or are looking to bring infringement action, then please do get in touch with our IP team.