INTRODUCTION

The Delhi High Court in the case of Diageo Brands and United Spirits Ltd v Great Galleon Ventures Ltd. passed an interim injunction against the Defendant, restraining them from using the Plaintiffs’ registered design employed in manufacturing bottles for Black Dog, Black and White and Vat 69.

[Image Sources : Istock]

BRIEF FACTS

The Plaintiffs are engaged in the business of manufacturing alcohol and are proprietors of the bottle design called “Hipster” in India and globally referred to as “Pocket Scotch”. They also claim common law rights in the trade dress and get up of the Hipster bottle for their products. Plaintiffs contend that a distinctive trade dress is created and that it serves as a source identifier.

The Defendant is also in the business of manufacturing alcohol through its principal brand ‘GOA’ and its variants. Plaintiffs got to know that the Defendant was manufacturing and marketing its products in 180 ml bottles that the Plaintiffs claimed were a “slavish and fraudulent imitation” of their Registered Design and dishonest adoption of trade dress and overall get up of their bottles and thereafter filed for a permanent injunction and ancillary reliefs against the Defendant. An ex-parte interim order was passed in the matter in February, 2021.

PLAINTIFF’S CONTENTIONS

1. Novelty of Registered Design: The Hipster is shaped like a smartphone, as opposed to typical hip flasks, with key characteristics like a tall, lean, and svelte appearance, smooth rounded shoulders, etc., which combine to produce the "shape and configuration" of its distinctive design, giving off an overall aesthetic appeal and no other 180 ml bottle or container of a comparable "shape and configuration" has ever been copied by a third party with a design as unique as the Plaintiffs'

2. Marketing expenses: A considerable amount has been spent to promote the Hipster through advertising and social media marketing.

3. Profits and goodwill: The Hipster had sold cases worth Rs. 100 crores sold in just 1.5 years in India and therefore the Plaintiffs contended to have extensive goodwill and reputation and the Defendant's imitation is a testament to the same.

4. Common law rights in trade dress: If a shape is utilised as a source identifier, it can also be protected as a trade mark and thereby claimed common law rights in several distinctive non-functional visual characteristics of the design.

5. Defendant making false distinctions- The Defendant is trying to make an false distinction between ‘new’ and ‘novel’ that does not exist otherwise.

6. Customers may be confused- The bottles are sold in the same stores where they may even be placed right next to each other. The Defendant launched its bottle at a much lesser price to attract the Plaintiffs' customers to its product.

DEFENDANT’S CONTENTIONS

1. Defendant’s success- The Defendant claimed to be a reputed liquor manufacturer, having sold more than 35 lakh cases of ‘GOA’ branded products, with over INR 100 crores in sales between 2019-2020.

2. Prominent display of Defendant’s mark- The Defendant alleged to have glaringly displayed its mark ‘GOA’ on all its products and that the same is widely recognised by customers, which eliminates any chances of confusion.

3. The Plaintiffs are not the creators or proprietors of the design: The creator of the Hipster design, as admitted by the Plaintiffs themselves, is an agency named Love Creative, and the mere submission of the latter’s website pages in the plaint cannot fulfil the requirement of Section 2(j) of the Designs Act, and since there is no pleading that the said author has executed or assigned the work for Plaintiffs, the Act's directive has not been met.

4. Invalid Designs under the Designs Act: Registration is not prima facie evidence of validity under designs law, and in cases where there is a serious challenge to the same, or in cases when a fresh design hasn't been put to the test, injunctions should not be granted. The Defendant further claimed that the test under designs law is from the point of view of an instructed person, knowledgeable of the state-of-the-art and common-to-trade aspects of the design, not from a consumer’s.

5. Plaintiffs’ design registration is liable to be cancelled- The Defendant claimed that the Plaintiffs’ registration was liable to be cancelled because: -

a. The design is inspired from hip flasks which are extremely common to the trade.

b. It is not new or original and introduction of ordinary trade variants into an old design cannot make it so.

c. The design is functional and the usage of the terms ‘pocket scotch’ or ‘Hipster’ in the plaint is indication of the same. The Plaintiffs had claimed that the design was “new and useful” and could not be permitted to refute this stance

d. The Plaintiffs’ contention that the design is inspired from a smartphone is false as on the latter’s website it is mentioned that the Hipster is a “hip-flask-size pack,” which is the subject matter of patent, not design, and a party cannot be permitted to take a stand before the Court contrary to what has otherwise been represented to the public for commercial benefits.

e. Mosaicing is impermissible under Section 4(c) of the Designs Act.

6. No similarity in products- There exists no similarity between the products of the parties as there is differentiation in the price as well as appearance.

7. No injunction liable to be granted- Injunctions are not granted as a matter of routine in cases of serious dispute and no case for passing off can be made by simply showing imitation of parts of the get-up of goods which are common-to-the-trade.

ISSUES

Upon hearing the contentions of both parties, the Court identified the following issues-

1. Who is the proprietor of the Registered Design?

2. What is the legal effect of registration of a design for deciding the relief of grant of injunction?

3. Has a prima facie case been established to show fraudulent and obvious imitation of the Plaintiffs' Registered Design, to warrant an injunction?

4. Has the Defendant demonstrated any ground of challenge enumerated under Section 19 of the Act, and if so, what is its effect?

5. Is there similarity in the trade-dress/get-up, constituting passing-off, and if so, can an injunction can be granted on that ground?

JUDGEMENT

1. Regarding the first issue, the Court held that there was no doubt that the Plaintiffs were the proprietors of the design since no document has been shown to prove that Love Creative had laid a claim to proprietary rights of the design and mere outsourcing of the design is no proof of the same.

2. In regard to the second issue, the Court held that an injunction would follow in case a design appears to be prima facie validly registered, possessing all necessary attributes for registration, and Plaintiffs are able to make a strong prima facie case of infringement, imitation or passing off.

3. While deliberating the third issue, the Court reinforced that while determining infringement substantial and overall similarity is to be seen instead of subtle differences and thereby declared the Defendant’s product to be deceptively similar to that of the Plaintiff as the Defendant made no plea that its business would be significantly affected, conducted no research and that the Plaintiffs were in prior use of the design and severe harm was being caused to the latter’s business. Moreover, the Defendant admitted that the Plaintiffs’ product was inspected before manufacturing the Defendant’s bottles.

4. The Court, while answering the fourth issue, noted that upon inspection of the pictures submitted by the Defendant, there did not seem to be any similarity between the designs of the parties. The Court was convinced of the novelty of the Plaintiffs’ design, accepting their claim that the bottle was designed keeping in mind young aspirational drinkers with lower disposable incomes who are unable to afford larger bottles and its portability. Additionally, the Court reinforced that mosaicing is no ground for cancellation of registration of design and since novelty is not inhabiting in the functionality

of the design, the Plaintiffs’ design cannot be said to be functional.

5. While deliberating upon the fifth issue, the Court reinforced the requisites for the tort of passing off as also reinstated in the case of RB Health (US) LLC v. Dabur India Ltd. and further, upon categorization of the elements such as colour schemes of both the products, held that no action of passing off was maintainable.

CONCLUSION

Keeping all the aforementioned aspects in mind, the Court held the interim application for injunction prima facie maintainable. Placing reliance on multiple judgements, the Court remarked that while a bottle in itself is not a novel invention, its novelty lies in its design and configuration, as conceptualised in the mind of its author. The Court held that while assessing trade dress imitation, the over all get up of the product is to be taken into consideration and not the design.

Author: Nandini Tyagi, 3rd year student of BA.LLB. at Maharashtra National Law University, Aurangabad. in case of any query, contact us at Global Patent Filing, or write back us via email at support@globalpatentfiling.com.