Over the past decade, design litigation has grown impressively. From a few thousand cases worldwide in 2010, it more than tripled to reach more than ten thousand cases in 2019.
Although much of the growth has been driven by China, design litigation remains central to the enforcement and protection of intellectual property in Europe.
Design disputes, particularly over bottles, are not that uncommon – over 250 infringement and invalidity lawsuits have been filed worldwide in the past five years. Although this is a small amount when compared to design disputes of other products such as shoes or sunglasses, it is relevant enough to show that the appearance of a container of liquid can make a difference in the sale of this same liquid.
The latest to join the line of bottle disputes was the recent spat between Marks & Spencer (M&S) and Aldi over the design of a gin bottle with edible gold flakes contained in a bottle shaped like a bell lit from below, with M&S seeking an injunction in the UK High Court.
M&S holds a number of UK industrial design registrations for ‘luminous gin bottles’ with a distinctive ‘bell’ shaped bottle. They also own registered design rights in the UK for the graphic design of a woodland scene on the bottle label.
The UK design applications were filed in April 2021 but claim priority from earlier Registered Community Designs (RCDs) filed in December 2020, and the registered designs do not appear to refer to ‘snow’ flakes of gold, nor to the light at the base of the bottle.
Although described as a “luminous gin bottle”, the UKIPO classified the records as “trinkets, table, mantel and wall ornaments, flower vases and pots”. EUIPO has classified RCDs as bottles with surface patterns/ornaments.
The case raises complex questions. Is it a bottle or an ornament? Where is the line between similar and different? Does a consumer go to Aldi and buy a product thinking it’s from M&S?
This is where judges and reviewers usually substitute themselves for the knowledgeable user (yet another legal fiction of the IP world) to try to assess whether there is the same “overall impression” between the two products. and their designs.
But what is the “informed user” of a bottle of gin and what matters most to their overall impression? The answer is anything but clear.
In an invalidity action brought by Hennessy relating to a liquor bottle, the EUIPO Invalidity Division held that the informed user, “knows the different models that exist in the field of bottles (or decanters) and has some knowledge of the characteristics that these models normally have, namely that they have a decorative pattern and a rounded bottle neck. The knowledgeable user will be able to compare designs side by side(April 2021).
As for the overall impression, in a September 2021 decision regarding a vodka bottle dispute, EUIPO’s disability division found the label to be the most attention-grabbing element. of the user when looking at the two models, and that differences such as the outline of the letters or in bands with word elements on the label could not be considered to have an impact on the overall impression.
On the other hand, in 2012, in a nullity action brought by Bacardi, the same division considered that the shape of the diamond bottle created by designer Karim Rashid was so distinctive because of the unusual shape and therefore other details were “of minor importance”. relevance”.
A review of the historical bottle dispute appears to provide many different approaches to the overall impression assessment, and a bottle with as many elements as the bell-shaped, illuminated, ornate, and gilded bottles that are compared in the recent M&S v Aldi affair will certainly be a challenge.
The British High Court ruling on the gold flakes of the gin bottle will certainly elucidate if there is any truth to Molière: “Gold gives the ugliest thing a certain air of charm, for without it it would be a miserable affair”.
David Marques is Senior Consultant, Products and Litigation Strategy, at Clarivate