The standards for evaluating novelty and originality differ from the standards for determining infringement
Introduction:The case of Diageo Brands B.V. & Anr. vs. Alcobrew Distilleries India Pvt. Ltd. before the Delhi High Court concerns the enforcement of rights under the Designs Act, 2000. The plaintiffs alleged piracy of their registered bottle design used for alcoholic beverages. The court examined the fundamental principles governing the assessment of novelty and originality in registered designs vis-à-vis prior art and the criteria for determining infringement under Section 22 of the Designs Act.
Factual Background:The plaintiffs, Diageo Brands B.V. and its Indian licensee United Spirits Ltd., are part of the globally renowned Diageo Group, which manufactures and sells several popular liquor brands. The plaintiffs are the proprietors of a registered design, Design No. 306577, covering the shape and configuration of a 180 ml bottle, referred to as the “Hipster.” The plaintiffs claim that the Hipster bottle, inspired by smartphone aesthetics, has distinctive features including a rectangular shape, symmetrical edges, rounded shoulders, a ‘V’ shaped neck, plateau-like raised front and rear walls, a rimmed rounded cap, and a dimpled bottom.
The defendant, Alcobrew Distilleries India Pvt. Ltd., sells its whisky product “Golfer’s Shot” in a bottle that the plaintiffs allege infringes their registered design. The plaintiffs pointed out that Alcobrew previously sold its 180 ml products in a differently shaped bottle but switched to the alleged infringing design after the success of the Hipster bottle.
Procedural Background:The plaintiffs filed a suit for injunction before the Delhi High Court under Section 22 of the Designs Act, 2000, and also sought to restrain the defendant from using the tagline “Pocket Shot,” allegedly similar to the plaintiffs’ “Pocket Scotch.” The plaintiffs relied on a prior favorable decision in Diageo Brands B.V. & Anr. vs. Great Galleon Ventures Pvt. Ltd., where the same design was protected against a near-identical infringing product. The defendant contested the interim relief application under Order XXXIX Rules 1 and 2 CPC, arguing that the design lacked novelty due to prior publication and that there were clear differences between its product and the plaintiffs’ Hipster bottle.
Issues Involved: Whether the plaintiffs' registered design is novel and original as against prior art?Whether the standards for evaluating novelty and originality differ from the standards for determining infringement?
Submissions of Parties: The plaintiffs argued that the design's novelty had been upheld in Diageo v. Great Galleon and that the defendant’s product imitated all the essential features of the registered design. They further submitted that the comparison between the registered design and prior art is distinct from the assessment of infringement between the registered design and the defendant's product, which is judged from the perspective of the ordinary consumer. The defendant argued that the Hipster design lacked novelty and was similar to earlier designs such as US Design No. D562138. The defendant also submitted that the differences in the defendant’s product — including dimensions, roundness of edges, and neck shape — were sufficient to avoid infringement.
Discussion on Judgments Cited: The court referred to multiple judgments to clarify the distinction between novelty analysis and infringement analysis and to identify the legal standards applicable in design law cases.
B. Chawla & Sons vs. Bright Auto Industries, AIR 1981 Delhi 95:Context: Cited by the defendant to establish that novelty must be judged by an “instructed eye,” i.e., an individual aware of prior art and common trade practices. Law laid down: The Delhi High Court held that novelty and originality are to be judged by an instructed person familiar with common trade knowledge. The mere introduction of ordinary trade variants into an old design does not render it new or original.
Negretti & Zambra v. WF Stanley & Co., (1925) 42 RPC 358: Context: Cited by the defendant to argue that for a humble or basic design, infringement requires virtual identity between the registered design and the allegedly infringing product. Law laid down: The Chancery Division of the UK High Court held that in cases of simple designs, even small differences could be sufficient to defeat an infringement claim. The court emphasized that infringement must be judged “by the eye,” and minor but noticeable variations in appearance could be enough to distinguish two designs.
Phillips v. Harbro Rubber Co., (1920) 37 RPC 233: Context: Referred to reinforce the principle that novelty or originality requires more than mere trade variants and that the instructed eye is the proper standard.Law laid down: Lord Moulton held that a registered design must differ in a substantial manner from prior designs to be considered novel. The instructed eye standard was reaffirmed for novelty analysis.
Carlsberg Breweries A/S v. Som Distilleries & Breweries Ltd., 2017 SCC OnLine Del 8125: Context: Relied upon by the defendant to support the argument that infringement of a registered design must be assessed on the basis of an overall visual impression and not by isolating common trade features. Law laid down: The Delhi High Court held that design infringement requires an assessment of the overall appearance of the registered design compared to the alleged infringing design. Features common to the trade or minor variations that do not affect the overall visual impression are not actionable.
Castrol Ltd. v. Tide Water Oil Co. (India) Ltd., 1994 SCC OnLine Cal 303: Context: Referred to by the defendant to argue that not every resemblance amounts to infringement. Law laid down: The Calcutta High Court held that imitation does not mean duplication, and the comparison must be of the design as a whole. A mere resemblance in certain parts or features is insufficient for infringement.
Dover Ltd. v. Nurnberger Celluloidwaren Fabric Gebruder Wolff, (1910) 27 RPC 498: Context: Cited by the defendant to argue that trivial or infinitesimal variations do not make a design registrable, and that newness must be confined to a substantial and significant part of the design. Law laid down: The court held that for a design to be registrable or to avoid infringement, there must be a substantial and non-trivial difference that creates a distinct identity in the eyes of an instructed person.
Reasoning and Analysis of Judge: The court recognized that the plaintiffs’ registered design had already been upheld as valid in Diageo v. Great Galleon. However, the court clarified that the standards for determining novelty and infringement differ. For novelty, the court emphasized that the standard is the “instructed eye,” aware of prior art and trade practices. Infringement, however, is determined from the perspective of the ordinary consumer or purchaser, i.e., whether the general public perceives the two designs as visually similar.
Applying this distinction, the court noted that while the Hipster design may be novel vis-à-vis the prior art, such as D562138, the question of infringement depended on whether the defendant’s Golfer’s Shot bottle was substantially similar to the Hipster design in the eyes of an ordinary buyer.The court carefully compared the two designs and found visible differences in the neck shape, shoulder configuration, dimensions, and finish of the bottles. It held that such differences would be perceptible to an ordinary consumer and would likely dispel confusion.
Once the Court finds that the distinguishing features in the suit design vis-à-vis prior art, on the basis of which the suit design claims originality and novelty, are also applicable to the impugned design vis-a-vis the suit design, the impugned design has necessarily to be treated as novel and original vis-à-vis the suit design. That conclusion, if arrived at, would rule out, altogether, the allegation of piracy.
The court rejected the plaintiffs’ argument that similarities in broad elements such as the “hip flask shape” or the rimmed cap were sufficient to establish piracy. The court held that these were common to the trade and not exclusive to the plaintiffs' registered design.
Final Decision: The court dismissed the plaintiffs’ interim injunction application, holding that the plaintiffs failed to establish a prima facie case of piracy under Section 22(1) of the Designs Act. However, the court allowed the suit to proceed to trial for full adjudication based on evidence.
Law Settled in this Case: The court clarified that the novelty of a registered design is to be assessed from the perspective of an instructed eye aware of prior art and industry practices. In contrast, design infringement or piracy under Section 22(1) must be evaluated from the viewpoint of the ordinary consumer, based on the overall visual impression of the two designs. For humble or basic designs, infringement will only be found where the defendant’s design is nearly identical to the registered design, with minor differences being sufficient to avoid liability.Common trade features such as basic shapes or standard configurations cannot be monopolized through a registered design and cannot by themselves form the basis of an infringement claim.
Case Title: Diageo Brands B.V. & Anr. vs. Alcobrew Distilleries India Pvt. Ltd.
Date of Order: 19 December 2022
Case No.: CS(COMM) 30/2022
Neutral Citation: 2022/DHC/005661
Name of Court: High Court of Delhi at New Delhi
Name of Judge: Hon’ble Mr. Justice C. Hari Shankar
Disclaimer:The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman,IP Adjutor [Patent and Trademark Attorney] ,High Court of Delhi
