About the authors:
Michael Pokrachynskyi works in the trade mark team at Appleyard Lees, helping a wide range of businesses, from start-ups to large corporations, to protect, commercialise and increase the value and identity of their brands. As a trainee trade mark attorney, Michael is engaged in a wide range of IP work, from technical tasks concerning trade marks and design registrations to more academic work related to the law of passing off and the law of copyright.
Chris Hoole is a partner and dual-qualified solicitor and chartered trade mark attorney at Appleyard Lees. He is experienced in contentious and non-contentious intellectual property (IP) matters, including trade marks, designs, copyright and patents. Working closely with a range of businesses, from blue-chip multinationals to SMEs, Chris provides tailored strategic and commercial advice to help IP-conscious businesses better protect and police their IP rights.
In December 2021 M&S initiated legal proceedings against Aldi over its festive gin bottle. With #caterpillargate still fresh in our minds, the Christmas gift of a second claim against Aldi filled our festive glasses with a sense of déjà vu.
In early 2021, M&S brought a claim against Aldi in relation to the sale of chocolate caterpillar cakes, leading to a social media frenzy, with Colin and Cuthbert entrenched in a tense media battle. Aldi’s tongue and cheek approach was heavily publicised, with Cuthbert even making a cameo appearance in its latest Christmas advert. In #FreeCuthbert #Round2 (as coined by Aldi), following the launch of its festive gin in October, with products actively sold from early November, we see M&S file a second claim in the Intellectual Property Enterprise Court.
The foundation for M&S’ legal claim
In April 2021, M&S filed to register various iterations of its festive gin bottle, including integrated light feature, leaf flakes, a cork stopper, and a separate graphic design for a winter forest motif. Unlike #FreeCuthbert #Round1, which focused on unregistered rights in passing off, the basis of the M&S claim in #Round2 is founded solely on UK registered design rights.
As per the Particulars of Claim, M&S submit that Aldi’s design (priced around 30% cheaper) does not create a different overall impression on the informed liqueur purchaser (presumably informed prior to drinking said gin), as compared to its UK registered designs. According to M&S, the designs are strikingly similar, with greatest importance placed on the shape of the bottle, integrated light feature, gold leaf flakes, winter forest silhouette with two-tone effect and its positioning. In support of its allegations, M&S refer to numerous media articles and social media posts comparing the similarity of the two designs. Amongst others, the claim seeks injunctive relief, costs and dissemination of the judgment.
Not long after the claim was issued, Aldi took to Twitter with a flurry of posts, memes and gin-based puns referencing to the allegations, with the case playing a key role in its social media ‘panto’ performance.
As with #Round1, it will be interesting to see how the claim develops, both in relation to the legal issues that will arise and via social media. As at the date of writing this article, it appears that #Round2 hasn’t gained the same traction as #caterpillargate, but gin bottles are less fluffy and cute.