Case Title: Diageo Brands B.V. & Anr. v. Great Galleon Ventures Limited
The Delhi High Court prohibited the Defendant from violating the Plaintiff's registered design. The Court, however, declined to award a temporary injunction on the basis of passing off.
In their liquor bottle design, branded as the "Hipster Bottle," the Plaintiff, a producer, marketer, and distributor of alcoholic drinks, alleged design infringement of their registered design. They also asserted common law rights in the appearance and trade dress of these bottles. Plaintiff claimed that the defendant's 180 ml bottles of alcoholic drinks were a "slavish and fraudulent replica" of their registered design and an unethical adoption of their trade dress. The defendant sells alcoholic beverages under the brand name "GOA."
The Delhi High Court issued an ex-parte interim order in favour of the plaintiff on February 23, 2021, prohibiting the defendant from selling the contested bottles. The defendant objected to the injunction and asked for the decision to be vacated and modified.
The plaintiff said that their design was unusual and unique because of their tall, slender, and streamlined appearance, which was based on the dimensions of a smartphone. Additionally, the plaintiff claimed that no other party had previously chosen such a creative design, hence this design adheres to "out of the usual trends." The plaintiff also claimed that they had incurred significant costs to advertise and promote the Hipster Bottle on social media and that as evidenced by their sales turnover, they have gained a great deal of goodwill and reputation in India as a consequence.
On the other hand, Defendant denied any infringement and asserted that there is no chance of a mistake because they clearly display their brand name, "GOLD," on their products. Defendant additionally claimed that the Hipster Bottle design was not "developed" by Plaintiff but rather by a different third-party company called Love Creative, challenging the legitimacy of Plaintiff's ownership and design registration.
The Court responded to the following issues brought up in this case:
Who owns the registered design, exactly?
In this regard, the Court declared that Plaintiff had contracted out the production of their design, which was produced in exchange for payment. The Court also took note of section 2(j)(ii) of the Designs Act 2000, which makes it abundantly apparent that the owner of a design is the one for whom it is thus performed, subject to consideration. In light of this, the Court rejected Defendant's argument that Plaintiff did not own the registered design.
What legal impact does register a design have when considering whether to grant an injunction?
The Court noted that as the registration of trademarks serves as prima facie proof of their validity, although there is no similar provision in the design legislation, there appears to be an apparent contradiction between designs and trademarks in this regard. According to the Court, the legislature is making a concerted effort to prevent any such inference from being made about design registrations. A person who feels wronged by a design has the option to petition for cancellation of the registration after the grant since a design is only made accessible to the public for scrutiny after registration.
Has a prima facie case been made that clearly and fraudulently imitates the registered design of the plaintiff, enough to support an injunction?
The Court addressed this problem by citing the visual representations and pictorial designs of both items and asserting that the general rule that governs such situations is obvious. That is, the yardstick is based on ocular and visual impressions. It was claimed that "the test is to examine if there is a considerable and general resemblance in the two designs," rather than "looking out for small differences." The Court came to the following conclusion after applying the design law concept in this case: "Unequivocally, at first glance, the Defendant's impugned bottles bore a significant likeness to the Hipster." As a result, the Court said Defendant's product was deceptively similar to Plaintiff’s registered design.
Last but not least, the Court refused to overturn the ex-parte preliminary injunction issued in this case in February 2021 and reaffirmed the injunction against the defendant for design infringement prohibiting them from “manufacturing, selling, offering for sale, importing, exporting, advertising, directly or indirectly dealing in the infringing products including "GOA Gold" Whisky (180 ml), "GOA Gold" Rum (180 ml), or any other product which has an identical/obvious or fraudulent imitation of the Plaintiffs' Registered Design.”