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.
  • The plaintiffs own a registered design (Design No. 306577) for a 180 ml bottle called the "Hipster."
  • The Hipster bottle features a rectangular shape, symmetrical edges, rounded shoulders, a 'V' shaped neck, 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 allegedly infringes the plaintiffs' design.
• Procedural Background:
  • The plaintiffs filed a suit before the Delhi High Court under Section 22 of the Designs Act, 2000.
  • They sought to restrain the defendant from using the tagline "Pocket Shot," similar to their "Pocket Scotch."
  • The plaintiffs relied on the decision in Diageo Brands B.V. & Anr. vs. Great Galleon Ventures Pvt. Ltd.
  • The defendant contested the interim relief, arguing lack of novelty and clear design differences.
• Issues Involved:
  • Whether the plaintiffs' registered design is novel and original against prior art?
  • Whether the standards for evaluating novelty and originality differ from those for determining infringement?
• Submissions of Parties:
  • The plaintiffs argued that their design's novelty was upheld in Diageo v. Great Galleon.
  • They contended that the defendant's product imitated all essential features of their registered design.
  • The defendant argued that the Hipster design lacked novelty and was similar to prior designs such as US Design No. D562138.
  • The defendant highlighted differences in dimensions, edge roundness, and neck shape.
• Discussion on Judgments Cited:
  • B. Chawla & Sons vs. Bright Auto Industries (AIR 1981 Delhi 95)
    • Context: Cited to establish that novelty must be judged by an "instructed eye."
    • Law Laid Down: Novelty and originality should be assessed by an expert familiar with trade practices.
  • Negretti & Zambra v. WF Stanley & Co. (1925) 42 RPC 358
    • Context: Argued that infringement requires virtual identity for basic designs.
    • Law Laid Down: Small differences in simple designs can defeat an infringement claim.
  • Phillips v. Harbro Rubber Co. (1920) 37 RPC 233
    • Context: Reinforced that novelty requires more than minor trade variations.
    • Law Laid Down: A registered design must substantially differ from prior designs.
  • Carlsberg Breweries A/S v. Som Distilleries & Breweries Ltd. (2017 SCC OnLine Del 8125)
    • Context: Supported the argument that overall appearance determines infringement.
    • Law Laid Down: Common trade features do not constitute actionable infringement.
  • Castrol Ltd. v. Tide Water Oil Co. (India) Ltd. (1994 SCC OnLine Cal 303)
    • Context: Argued that resemblance does not always imply infringement.
    • Law Laid Down: The whole design must be considered, not just individual elements.
  • Dover Ltd. v. Nurnberger Celluloidwaren Fabric Gebruder Wolff (1910) 27 RPC 498
    • Context: Cited to argue that trivial variations do not create a new design.
    • Law Laid Down: Substantial and significant differences are required for novelty.
• Reasoning and Analysis of Judge:
  • The court upheld that novelty is assessed from the perspective of an "instructed eye."
  • Infringement is judged based on the ordinary consumer's perception.
  • The court found visible differences in neck shape, shoulder configuration, dimensions, and finish.
  • The Hipster design was novel compared to prior art, but the defendant's bottle was not substantially similar.
• Final Decision:
  • The court dismissed the plaintiffs' interim injunction application.
  • It held that the plaintiffs failed to establish a prima facie case of piracy under Section 22(1) of the Designs Act.
  • The case was allowed to proceed to trial for full adjudication.

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:
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Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539