Whisky Wars Over Bottle Design
The Delhi High Court in its judgement dated 2nd August, 2022 examines the criteria of a “new and original design” and what constitutes trade dress infringement. The court in a suit for infringement of the registered design and passing off brought by Diageo Brands B.V. & Anr. (hereinafter ‘Diageo’) against Great Galleon Ventures Limited (hereinafter ‘Great Galleon) analysed the similarity of competing design of the bottles ( depicted below) and their trade dress.
The Plaintiffs (Diageo) claims to be the proprietor of the registered design of the 180ml bottle used for its whisky brands “Black Dog (Black Reserve),” “Black Dog (Golden Reserve),” “Vat 69”, and “Black & White” (“HIPSTER bottles”). The Defendant (Great Galleon) manufactures whisky under the brand “GOA” and its variants, “GOA GOLD” and “GOA SPIRIT OF SMOOTHNESS”. The Plaintiffs alleged that products of the Defendant sold under the mark “GOA” and its variants in 180 ml bottles are a “slavish and fraudulent imitation” of its registered design and a dishonest adoption of the trade dress and overall get up of its bottle design (hereinafter HIPSTER Bottles). The Court at the admission stage was convinced tDiageo’s case:hat Diageo had made out a prima facie case and injuncted Great Galleon by way of an ex parte order dated 23rd February 2021 from selling whisky using the 180 ml bottles as depicted above. Defendant opposed this injunction, seeking vacation/setting aside of the order.
The Plaintiff claims that the design of the bottle has the following essential features:
(a) tall, lean, and sleek look, (b) rectangular shape inspired by the shape and proportion of a smartphone; (c) smooth rounded shoulders and symmetrical edges; (d) protruding V-shaped neck situated at the middle of both shoulders; (e) symmetrically raised and plateau-like front and rear walls; (f)two-toned rimmed and rounded cap; and (g) dimpled bottom. The said essential features form the ‘shape and configuration’ of its distinctive design, compositely creating a visual impression that is ‘appealing to the eye’. No third party has ever adopted a 180 ml bottle/packaging of a similar ‘shape and configuration’ with such a novel design.
Great Galleon case:
- The Plaintiffs’ Registered Design is not a new or original design due to the existence of prior art
- The plaintiffs’ and Defendants’ bottle are mere trade variants of the hip flask
- The trade dress Of the Plaintiff’s bottle is common to the trade and non-distinctive
- The Plaintiffs’ Registered Design is liable to be cancelled on the ground of a) mosaicing and b) being functional.
The Court examined the following questions while determining the injunction.
- Who is the proprietor of the Registered Design?
Court’s observation: The controversy arose about whether the agency engaged by Diageo was the rightful owner of the design. The Court noted that Plaintiff got the design outsourced, for which Plaintiff paid 1.5 million GBP. As per Section 2 (j) of the Designs Act, even when work is executed for one person by another, the first person would remain the proprietor of the design, and at no point will the person who executed the work retain any rights/ title for the work. Thus, Plaintiff is the proprietor of registered design No. 306577.
- What is the legal effect of registration of a design for deciding the relief of grant of injunction?
Court’s observation: The Court stated that there could not be any hard and fast rule that merely because a design registration is of a recent date, the Plaintiffs would not be entitled to an injunction. Given the lack of statutory distinction between the initial and later years of registration, the effect of registration must prevail uniformly over the course of the entire life of the registration.
Section 11, read with Section 2(c) of the Designs Act, grants the proprietor ten years from the registration date to exercise its exclusive right to apply its design to any article in the class in which it is registered. Under such circumstances, the date of design registration would not be of consequence.
- Has a prima facie case been established to show fraudulent and obvious imitation of the Plaintiffs’ Registered Design so as to warrant an injunction?
Court’s observation: The Court observed that it is a trite principle of law that for determining infringement of designs, the yardstick is ‘visual effect’, ‘appeal to the eye’ of the customer, and ‘ocular impression’ of design, as a whole. The test is not to look out for subtle dissimilarities but rather, to see if there is substantial and overall similarity in the two designs. While applying this test, the Court had to be conscious that not every resemblance between the two designs would amount to infringement. The comparison by the eye has been made by physically holding in hand the Defendant’s impugned bottle alongside the Plaintiffs’. Unequivocally, at first blush, Defendant’s impugned bottles are remarkably similar to Plaintiff’s bottle design (hereinafter Hipster). All the unique, essential, and novel features of the Hipster: long, lean and sleek design, curved shoulders, ‘v’ element on the neck, etc. are found on the impugned bottle as well. In terms of shape, the bottles have identical necks, shoulders, joints, and edges. Both are identically rectangular in shape and have a dimpled bottom, which is nearly identical and has sufficient similarity to make it difficult for the consumer to distinguish one from the other.
The Court observed the impugned design need not be an exact replica to constitute infringement. Minor changes in size are insignificant as the overall, and substantial similarity is glaring and undeniably apparent to the naked eye.
The Court found that the Plaintiffs have established a prima facie case in their favour and have successfully substantiated their case that the Defendant’s impugned bottle design is an obvious and slavish imitation of the Plaintiffs’ Registered Design.
- Has the Defendant demonstrated any ground of challenge enumerated under Section 19 of the Act, and if so, what is its effect?
Court’s observation: The grounds raised by the Defendants for challenging the validity of the registered design are mentioned in the below table:
|Grounds raised by Defendant||Court’s observation|
|The Plaintiffs’ Registered Design is liable to be cancelled on the ground of not being a new or original design due to existence of prior art.||
2D illustrations do not depict the application of the design with the same visual effect as a 3D model. For judging by the eye, the prior art or publication must exhibit clarity of application to a specific article capable of being judged. Understanding of a 3D design can be perceived if the prior publication is lucid and is shown from several angles to gauge depth/perception. Reliance on a two-dimensional view can, in fact, be quite misleading, as can be seen from the following depictions:
The Court mentioned that aesthetic appeal (or, in other words, the pleasing, attractive appearance) is the sum total of the configuration of the unique features of the Bottle (like rounded shoulders, V neck, symmetrical design, raised front and back etc.) is the novelty that needs protection. And is missing in all prior arts relied upon by the Defendants.
|The Plaintiffs’ Registered Design is liable to be cancelled on the ground of mosaicing||
The images filed by Defendant does not provide the perspective/3D view of the claimed/alleged known designs. The Court cannot take the neck of one Bottle and the shoulder of another and attempt to stitch together such known features to see whether the Plaintiffs’ Registered Design is disclosed.
The Court was thus unconvinced of the Defendant’s argument that the Plaintiffs have merely ‘cobbled together’ known integers.
|The Plaintiffs’ Registered Design is liable to be cancelled on the ground that it is functional in nature||The Court observed that it is quite possible that an article has both design aspects and functionality aspects and found that the Defendant has failed to establish that the alleged functionality can only be performed by shape and configuration of the Plaintiffs’ Registered Design. Rather, Defendant itself was manufacturing/selling another 180 ml bottle for its product, which performs the same function – of storing alcohol – as that of the Plaintiffs’ Registered Design.|
The Court thus found that none of the grounds put forth by the Defendant was valid for the cancellation of the Plaintiff’s design registration.
- Is there similarity in the trade-dress / get-up, constituting passing-off, and if so, can an injunction can be granted on that ground?
Court’s observation: The Court noted that the distinctiveness of a trade dress is not to be perceived by its individual elements in isolation but has to be seen as a whole to determine whether its essential features are distinctive enough to become a source identifier. Hipster is marketed in three colour variants: white, golden and black. The Defendant’s bottles are in the colour variants red and black. While all the bottles are in a dual-chromatic scheme, the Court noted there is indeed some grain of truth in the Defendant’s submission that the black-and-gold combination is common to trade and used by a plethora of alcohol manufacturers.
Similarly, a two-toned rimmed and rounded cap has been widely used in the said industry and is not unique to the Plaintiffs. Hence, upon comparing the trade dress as a whole, the Court found that the essential features are distinctive enough to become a source identifier.
Apart from the black & gold colour scheme, there is hardly any similarity in the labels, trade dress, and get-up. Thus, the Court was not entirely convinced that Defendant is imitating the same to deceive unwary customers. The Court held that Defendant’s purported imitation of the Hipster’s trade dress has not resulted in some tangible confusion regarding the origin or source of the goods. In coming to this conclusion court noted that the ‘GOA’ brand is boldly displayed on the bottle, the labels are largely dissimilar, and the price points of the goods are vastly different.
The Court found that there are undeniably some similarities which are quite visible, but they are largely occurring because of identical designs (for which Plaintiff is entitled to an injunction on account of design infringement) and the monochromatic colour of the bottles. However, at this interim stage, such similarities are insufficient to grant injunction on a passing off action, particularly when the trinity test, recounted above, is not met.
The Defendant (Great Galleon) was thus restrained from using the bottle design as it constituted Design Infringement.
The case has clarified important factors for comparing a registered design with the prior art to challenge its validity and clarified what constitutes prior publication.
- The new and original design has to be seen as a whole and little variation in pre-existing well-recognized shape of an article of common use in the market, such as adding a curve here or there, would not make it a new or original design.
- If the proprietor of a design can substantiate a thought process/creativity for the creation of the design, as in this case, the plaintiffs’ claimed that no one had applied a shape inspired by smartphones to liquor bottles prior to the Plaintiffs. The aim was to attract young aspirational drinkers who may have lower disposable incomes and are not able to afford the expense of larger 750 ml bottles. The Plaintiffs’ product was the first in the market to take the visually appealing features of a smartphone and apply it to pre-packaged alcohol.
- Another important clarification from this judgment was that the mosaicing is generally performed while challenging the inventive step requirement in a patent and will not stand well while invalidating a design registration.
- Disclosure of two-dimensional image of the design if not applied to an article, cannot constitute a valid prior art for challenging the validity of a registered Design.
- And finally, the infringement of a registered design cannot be said to automatically translate into the passing off action from the point of view of the product’s trade dress. The classic trinity test should be fulfilled to sustain the passing off claims.