Registered designs are one of the pillars of the intellectual property (IP) law system. Yet patents, trade marks and copyright get most of the headlines. But there has recently been an interesting judgment in the UK about registered designs and it's certainly worth a look as the judgment reminds us that registered designs can be significant.
The UK case is complex and this article will focus on what we regard as the most relevant points.
M&S and its funky light-up gin bottles
Retail chain Marks & Spencer ("M&S") owns various UK design registrations that cover gin products, including a product range that the company introduced in 2020, consisting of gin-flavoured liqueurs that are sold in a festively decorated bottle.
How festive? Well, the bottle contains a light-emitting diode ("LED") light, as well as edible gold flakes that, when shaken, magically produce the appearance of a golden snow globe and a wintry forest design. So very festive!
Aldi
In November 2021 Aldi released a 'lookalike' clementine and blackberry-flavoured gin-based liqueur. M&S, sued Aldi for infringement relating to four of its design registrations.
UK court proceedings
The case started in the Intellectual Property Enterprise Court ("IPEC").
IPEC
In January 2023, IPEC ruled that Aldi's gin liqueur bottle infringed four of Marks & Spencer's UK design registrations. The court pointed to the common features such as the snow and light. The court made the point that the Aldi product did not 'produce a different overall impression' sufficient to avoid infringement. Aldi took this judgment on appeal.
The Court of Appeal
The Court of Appeal dismissed Aldi's appeal. Judge Arnold handed down the judgment and said that the judge in the IPEC court had 'made no error of principle in comparing the overall impression of the Aldi products with those of the registered designs, and his conclusion was one that he was fully entitled to reach.'
The 12-month grace period
It is important to note that before applying to register the designs, M&S had released a number of other 'iterations' of the same product, as part of what it called the 'Gin Globes Project'.
The Court of Appeal ruled that M&S' earlier versions of its snow globe should not form part of the design corpus when it came to assessing infringement – the reason for this was that those designs (bar one) had been disclosed within the 12-month grace period before the priority date.
South Africa
So much for M&S and Aldi. There isn't a great deal of registered design case law in South Africa, so we'll end off by discussing some of the basics of design law in South Africa, in the hope that it may persuade South African entrepreneurs and companies (companies that may be very familiar with patent and trade mark protection) to consider whether registered design protection might be appropriate for them:
- In South Africa product design can be protected by way of registered designs.
- The applicable South African legislation, the Designs Act 1993, provides that designs can be either aesthetic or functional. An aesthetic design is one involving 'features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof.'
- The most commonly-quoted design law authority in South Africa is the 50+ year-old British case of , which tells us that being judged solely by the eye means that the features 'must be calculated to attract the attention of the beholder.'
- In the South African case of Omega v Swisstool, the court said that it is necessary to 'view the design through the spectacles of the customer'. Before going on to say that 'aesthetic designs are those that invite customer selection – and customer discrimination between articles – solely by their visual appeal.'
- Besides aesthetic designs, South African law also provides for the registration of functional designs – this is defined as one involving 'features which are necessitated by the function which the article to which the design is applied is to perform.'
- Novelty is a requirement for both aesthetic and functional designs. In the case of an aesthetic design the test for novelty is that it must be 'new' and 'original'. In the case of a functional design the test for novelty is that it must be 'new' and 'not commonplace in the art in question.'
Finally
Recent statistics show that applications for registered designs in the UK went up in 2020, suggesting that there are certainly businesses that see value in registered designs. Hopefully South African businesses will too!
If you would like to discuss design registration in South Africa, get in touch with ENS' IP team.
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.
