Lite sul design di bottiglie di gin: Mark & Spencer batte Aldi in appello UK

Ecco le bottiglie in lite:

altro originale registrato da M&S
originale registrato da M&S
prodotto concorrente di ALDI, stimato in contraffazione

Il giudice inglese di appello conferma la contraffazione con decisione 27.02.2024, Case No: CA-2023-000521, della Court of Appeal, Judge Hacon (di cui ci notizia e a cui ci offre il link Alessandro Cerri in IPKat) su normativa ante-Brexit ma dalla stessa non influenzata (lo dice espresameente la corte)  e quindi di interesse per la UE.

Conclusioni del giudice di primo greado (come da sentenza di appello)

<<The judge’s assessment may be summarised as follows.
30. The relevant sector. The relevant sector was, as Aldi contended, spirits and liqueurs in the UK.
31. The informed user. It is common ground that the informed user is a consumer. It followed from the judge’s identification of the relevant sector that the informed user was a UK purchaser and consumer of spirits and liqueurs. As an informed user, the user would exercise a relatively high degree of attention compared to the average consumer who is the touchstone in trade mark law.
32. The designer’s degree of freedom. If a snow effect was to be used, it had to be created by the use of gold flakes. The aperture of the bottle had to accommodate the injection of the liqueur with gold flakes in it, but there was no reason to suppose that this was much of a limitation. If a design was to be printed on the side of the bottle, it would be simpler to print on a straight side. The more colours the design had, the more expensive production would be. Otherwise, the designer had considerable freedom, particularly with regard to the shape of the bottle and the design to be printed on it.
33. As to the design on the side of the bottle, if gold snow was to be used in the liquid and if a design was to be printed on the side of the bottle, it made sense to have a winter design. But there was almost complete freedom as to how to make a design look wintry.
34. There was no design constraint requiring the liqueur to be illuminated. There would be no other practical place to put a light other than in the base of the bottle, but that required the choice of a light in the first place.
35. Features solely dictated by technical function. Although Aldi argued that four features of the designs were solely dictated by technical function, all four features were aspects or consequences of aesthetic choices made by the designer.
36. The relevance of branding. The Aldi bottles bear the words “The INFUSIONIST
Small Batch”. This was relied on by Aldi as a difference from the Registered Designs in which no words appear. The judge’s assessment was that the word
“INFUSIONIST” was clear enough to make an impression, whereas the words “The” and “Small Batch” were less conspicuous and played no significant additional part in the overall impression of the designs.
37. Effect of the priority date and grace period. The judge found that a number of designs relied on by Aldi did not form part of the design corpus due to the effect of the priority date (15 December 2020) and the grace period (which started on 15
December 2019).
38. The  design corpus. The judge reproduced images of 33 bottles in [70] and [71] which represented a small proportion of the totality of the design corpus. Excluding M&S’s products, four bottles with an integrated light were marketed before December 2020, but none with a shape like that of the Registered Designs. Five members of the corpus had a snow effect of some sort, none with a bottle shape similar to that of the Registered Designs. Two had both a snow effect and an integrated light. Saverglass, the manufacturer of the bottles supplied to M&S, had a UK registered design for the shape of those bottles (referred to as the “botanics” shape) which formed part of the corpus. Of the totality of the design corpus, excluding M&S designs made available in the grace period, only the M&S 2019 Snow Globe shown in [33] had the botanics shape and a snow effect (but no integrated light).
39. Comparison of the overall impressions. The judge expressed his assessment of the comparison as follows:
80. The features that the informed user would note as being in
common between the RDs in suit and the Aldi bottle are these:
(1) The identical shapes of the two bottles. The informed
user would pay little attention to the fact that both have
in part straight sides. That is true of the vast majority
of the spirit bottles shown in the evidence. The
informed user would take into account that for
economic reasons the range of bottle shapes for spirits
and liqueurs does not extend to every functional and
aesthetic possibility. However, this would not detract
from the apparent identicality in shape when measured
against the design corpus as a whole.
(2) What appear to be the identical shapes of the two
Judgment Approved by the court for handing down. M&S v Aldi
(3) A winter scene over the entirety of the straight portion
of the side, consisting in one case entirely, and in the
other case mostly, of tree silhouettes.
(4) In the case of UK 80 and 84, a snow effect.
(5) In the case of UK 82 and 84, an integrated light.
81. In my judgment and with the design corpus in mind, each of
those similarities would appear significant to the informed user
and cumulatively they would be striking.
82. There are differences. Aldi relied on these:
(1) The winter scene of the RDs in suit is in white only and
features a stag and a doe. On the Aldi bottles the scene
is in white and a colour with trees only.
(2) The Aldi bottle has the “Infusionist” branding. The
RDs in suit have none.
(3) The foregoing two features of the Aldi bottle give it a
front. There is no front to the RDs in suit.
(4) The Aldi winter scene is brighter and busier than that on
the RDs in suit.
(5) The Aldi stoppers have a watch strap label with the Aldi
logo on the top, the RDs in suit do not.
(6) The Aldi stoppers are darker in shade than those of the
RDs in suit.
83. Going back to the statutory test, it is whether the RDs in suit
and the Aldi bottles produce a different overall impression. In
my judgment they do not because of the features they have in
common, set out above. The differences to which Aldi points
are there, but they are differences of relatively minor detail
which do not affect the lack of difference in the overall
impressions produced by the Aldi bottles on the one hand and
each of the RDs in suit on the other.” >>

Sul motivo di appello 7 relativo al comparison:
<<61 Since the judge’s conclusion that the designs of the Aldi products produced the same overall impression on the informed user as the Registered Designs involved a multifactorial evaluation, this Court can only intervene if he erred in law or in principle: see Magmatic at [24] and compare Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, [2019] Bus LR 1318 at [78]-[81] (Lord Hodge) and Re Sprintroom Ltd [2019] EWCA Civ 932, [2019] BCC 1031 at [72]-[78] (McCombe, Leggatt and Rose LJJ).
62. Aldi contends that, even if it fails on grounds 1-6, the judge did fall into error. Junior counsel for Aldi concentrated his oral submissions on two points. First, he argued that the judge had not properly considered the impact of the absence of the snow effect and the integrated light on the comparison with respect to the Registered Designs which did not include those features. Secondly, he argued that the judge had given undue weight to the shapes of the bottles and stoppers, particularly given that the shape of the bottle was protected by a third party registered design and that the design corpus included bottles with similar stoppers.
63. I do not accept either of these arguments. Given that I have concluded that UK 78 and UK 80 do both include a light, that point falls away. As for the point about the snow  effect, at best this would mean that Aldi infringed UK 80 (and UK 84) but not UK 78 (or UK 82). The correct approach, however, must be to compare UK 78 and UK 80 Judgment Approved by the court for handing down. M&S v Aldi (and UK 82 and UK 84) respectively with the Aldi products in the same states. I think that is effectively what the judge did, although he did not say so explicitly. The weight to be given to the shape of the bottles and the stopper was a matter for the judge as part of his overall assessment. The fact that the shape of the bottle was protected by a third party registered design is irrelevant apart from the fact that the design therefore formed part of the design corpus which the judge took into account.
He also took the stoppers in the design corpus into account. He made no error of
principle in comparing the overall impressions of the Aldi products with those of the Registered Designs, and his conclusion was one that he was fully entitled to reach”.