Diageo Brands B.V. & Anr. vs. Alcobrew Distilleries India Pvt Ltd

Neutral Citation Number : 2022/DHC/005661
$~ (Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Reserved on:8 December 2022
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Pronounced on: 19 December 2022

+ CS(COMM) 30/2022 & I.A. 725/2022
DIAGEO BRANDS B.V. & ANR. ..... Plaintiffs
Through: Mr. Amit Sibal, Sr. Adv. with Mr.
Nitin Sharma, Ms. Savni D. Endlaw, Mr. Vivek
Ayyagari, Mr. Angad S. Makkar, Mr.
Sudarshan M.J. and Mr. Saksham Dhingra,
Advs.

versus

ALCOBREW DISTILLERIES INDIA PVT LTD ..... Defendant
Through: Mr. Chandar M. Lall, Sr. Adv.
with Mr. Kapil Wadhwa, Ms. Tejasvini Puri,
Ms. Surya Rajappan, Ms. Vasanthi Hariharan,
Mr. Vishnu Langawat and Ms. Ananya Chugh,
Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR

J U D G M E N T
% 19.12.2022

I.A. 725/2022 (under Order XXXIX Rules 1 and 2 of the CPC)

Introduction

1. Two seminal issues arise, albeit at an interlocutory stage, for
consideration in the present case. They arise in the following factual
scenario. The plaintiffs alleges piracy, by the defendant, within the
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meaning of Section 22(1) of the Designs Act, 2000 of their registered
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Design No. 306577. The defendant, invoking Section 22(3) read with
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Section 19(1)(b) and (c) , alleges, per contra , that the plaintiffs‘ design is
bad on account of prior publication, and is lacking in novelty and
originality vis-à-vis prior art in the form of two designs, one of which is
Design No D562138 and the other to which allusion would be made in
para 49 infra. The plaintiffs, in defence, impressed on certain
distinguishing features of the suit design vis-à-vis said prior art, to assert
the claim of the suit design to novelty and originality, and, consequently,
validity. That argument already stands accepted by this Court in its
judgement in Diageo Brands B.V. & anr. v. Great Galleon Ventures
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Pvt. Ltd ( referred to, hereinafter, as ― Diageo v. Great Galleon ‖) which,
consequently, upholds the validity of the suit design. The very same
features, which, according to the plaintiffs, distinguish the suit design
from prior art, also, prima facie, distinguish the impugned design of the

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defendant‟s product from the suit design. The defendant‘s contention is
that, if these features confer novelty and originality to the suit design vis-
à-vis prior art, they, equally, apply to the suit design vis-à-vis the
defendant‘s design which cannot, therefore, be treated as infringing, or
pirating, the suit design. Even otherwise, contends the defendant,
piracy, within the meaning of Section 22 of the Designs Act would
require near identity between the suit design and the infringing design,
which is clearly absent in the present case. The plantiffs contend, per
contra , that, firstly, the scope of ―novelty analysis‖ of the suit design vis-
à-vis prior art is different from the scope of ―infringement analysis‖ of
the suit design vis-à-vis the defendant‘s design and, secondly, that the
aspect of novelty has to be seen from the point of view of the ―instructed
eye‖ whereas the aspect of infringement would involve the ―ordinary
purchaser‖. Apart, therefore, from the general issue of whether the
defendant‘s design pirates the suit design, the following three issues need
to be addressed, in this backdrop:

(i) Is the scope of analysis, while examining the aspect of
novelty and originality of the suit design vis-à-vis prior art, and the
aspect of piracy of the suit design by the design of the defendant‘s
product, different? In other words, if the features which
distinguish the suit design and, therefore, confer novelty to it vis-à-
vis prior art, also distinguish the defendant‘s design vis-à-vi s the
suit design, can the defendant‘s design be regarded as infringing
(or pirating) the suit design?

(ii) Are the ―eyes‖, through which the aspects of novelty of the
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suit design vis-à-vis prior art, and of piracy of the suit design by
the defendant‘s design, different, the former being the ―instructed
eye‖ aware of prior art and the latter the eye of the ―ordinary
purchaser‖ who, so to speak, sees the products on the shelf?

(iii) How are the plaintiffs‘ design and the defendant‘s product to
be compared? Is the assessment to be made from the point of view
of the average consumer who sees the products from a distance?

2. I, therefore, attempt to address, albeit prima facie , these issues.

Facts

3. This judgment disposes of IA 725/2022, under Order XXXIX Rule
1 and 2 of the Code of Civil Procedure, 1908 (CPC), preferred by the
plaintiffs Diageo Brands B.V. Netherlands and its licensee in India,
United Spirits Ltd., against the defendant Alcobrew Distilleries India Pvt
Ltd.

4. The plaintiffs allege infringement, by the defendant, of their
registered Design No. 306577 (―the suit design‖ hereinafter), granted
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registration on 22 March 2019.

5. The suit design was subject matter of earlier design infringement
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proceedings in Diageo v. Great Galleon .

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6. The suit design in Diageo v. Great Galleon was the same as the
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suit design in the present case. The design of the defendant‘s product in
that case and in the present are, however, different. The design of the
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defendant‘s product in Diageo v. Great Galleon was a near identical
replica of the suit design. The impugned design in the present case is,
however, different from the suit design in several respects. On this
aspect, learned Counsel are ad idem .

7. What has to be seen is whether, prima facie , the differences in the
impugned design vis-à-vis the suit design are sufficient to defeat the
allegation of piracy.

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8. Nonetheless, as the suit design in Diageo v. Great Galleon and in
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the present case is the same, this Court, vide order dated 9 September
2022, required the defendant to address arguments first, as to how the
present case could be distinguished from the decision in Diageo v. Great
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Galleon .

9. Arguments were, therefore, first addressed by Mr. C.M. Lall,
learned Senior Counsel for the defendant, whereafter Mr. Amit Sibal,
learned Senior Counsel for the plaintiff, responded.

10. Both learned Senior Counsel were heard at length and
opportunities for advancing submissions by way of rejoinder and sur-
rejoinder have also been granted.

An Overview

11. Plaintiff 1 is the proprietor of Design No. 306577, in respect of a
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180 ml bottle, which is referred to, by the plaintiffs, as a ―Hipster‖, in
which alcoholic beverages are packed and sold. The front view, the rear
view, the top view, the bottom view, the side view and the perspective
view of the design, as per the certificate granting registration, may be
depicted thus:







12. The Plaintiffs also assert proprietorial rights in respect of its trade
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mark ―Pocket Scotch‖, under which it sells alcoholic beverages in the
Hipster bottle.

13. The certificate of registration granted in respect of Design No.
306577 certifies that novelty resides, in each view of the registered
design, ―in the shape and configuration of the bottle as illustrated‖. The
registration certificate does not allude to any particular feature of the
bottle as being specifically novel. Novelty, therefore, has been held to
reside, by the certificate of registration of design, in its overall shape and
configuration.

14. According to the plaintiffs, the defendant is manufacturing and
selling whisky under the trade name ―Golfer‘s Shot‖ in a bottle/flask, the
design of which infringes the suit design.


15. Learned Counsel for the parties have provided, to the court, the
actual bottles in which the plaintiffs and defendant sell their respective
products. For the sake of comparison, photographs of the front view, rear
view, top view, bottom view, side view and perspective view of the
defendant‘s bottle, may also be provided thus, side by side with the
corresponding views of the suit design :
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16. Plaintiff 1 Diageo Brands B.V. Netherlands is the proprietor of the
suit design. Plaintiff 2, which is a part of the Diageo group of
companies, produces, imports, markets and distributes the products of
Plaintiff 1. Plaintiff 2 is the proprietor of the brand ―Black Dog‖
including its formative marks, logos, device mark, label and trade dress
of the bottles and flasks in which the beverage ―Black Dog‖ is packed
and sold.

17. The particulars of the suit design, held by Plaintiff 2, may be
provided in a tabular fashion thus:

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The Plaint

18. The plaint avers that Love Creative Ltd, a design agency based in
the UK was commissioned to create the suit design which, according to
Mr. Amit Sibal, learned Senior Counsel for the plaintiff, is unique and
was conceptualised consequent to the market interest in smartphones,
with the advent of the new millennium. According to the plaint, the
plaintiff‘s ‗Hipster‘ design was modelled on the shape of a smartphone
and, as it could be conveniently carried in a hip pocket, was marketed, by
the plaintiffs, under the appellation ―Pocket Scotch‖. In conceptualising
and devising the said design, the plaintiff avers that it has expended
approximately £ 1.5 million, with an additional £ 1.9 million spent in
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setting up a supply distribution chain and global commercialisation of the
―Pocket Scotch‖ products. According to the plaint, the imbibing of
Scotch whisky in the plaintiff‘s Hipster bottle was ―more exciting,
accessible, unique and convenient‖.

19. Para 16 of the plaint asserts the unique features of the suit design:

―...The essential features of the Plaintiffs' 'Hipster' design reside in
its rectangular shape inspired from shape and proportion of a
smart phone; its smooth rounded shoulders and symmetrical
edges; protruded 'v' shaped neck situated at the middle of both the
shoulders; symmetrically raised and plateau like front and rear
walls; rimmed rounded cap; dimpled bottom. The said essential
features of the 'shape and configuration' of the design of Plaintiffs'
'Hipster' are distinctive and compositely create striking visual
impression and 'appeal to the eye' which makes it novel. ‖


20. The suit design is claimed to have been first launched globally in
2018 to market the plaintiff‘s well-known ‗Johnnie Walker (Black
Label)‘ and ‗Johnnie Walker (Red Label)‘ Scotch Whisky brands. In
India, it is averred that the plaintiffs‘ Vat 69, Black Dog (Black Reserve),
Black Dog (Triple Gold Reserve) and Black & White Scotch Whisky
brands were also packed and sold in the 180 ml Hipster bottles.
Additionally, it is stated that the plaintiff has now launched its ‗Smirnoff‘
vodka brand in the same Hipster bottle. The plaint provides photographs
of the Vat 69, Black Dog (Black Reserve), Black Dog (Triple Gold
Reserve) and Black & White scotch whisky brands of the plaintiff, in the
Hipster bottles, thus:
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21. The monochromatic colour scheme of the Hipster bottle, with a
label in the same background colour, the rim of the cap being of a
different colour, the manner in which the text and label are depicted on
the bottle, and other indentations and embellishments on the bottle are
asserted as resulting in a distinctive trade dress, which acts as a source
identifier for the plaintiff‘s products. With the passage of time, asserts the
plaint, the plaintiff‘s ‗Pocket Scotch‘ mark has acquired immense
domestic as well as trans-border goodwill and reputation, and the mark
―Pocket Scotch‖ and ―Hipster‖ are invariably indentified only with the
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plaintiff‘s 180 ml Scotch Whisky brands, as sold in the Hipster bottle.

22. The suit design is stated to have become exclusively identified
with the plaintiff and its products. The plaintiff‘s trade dress and the suit
design are asserted to have acquired a secondary meaning, along with the
marks ―Hipster‖ and ―Pocket Scotch‖. To emphasize the goodwill that
the plaintiff‘s design has garnered over a period of time, the plaint avers
that the sales, in India, of branded products of the plaintiff in the Hipster
bottles, during May 2019 to March 2020, totaled ₹ 50.65 crores and,
during the period April to September 2020, totaled ₹ 50.09 crores. The
plaint also states that it has incurred promotional expenses, for its
products in the Hipster bottles, to the tune of ₹ 9.2 crores in May 2019 to
March 2020 and ₹ 3.3 crores in April to October 2020.

23. The defendant is also engaged in the manufacture and sale of
alcoholic beverages. The plaint asserts that the defendant is packing and
selling its 180 ml products in bottles, the design of which infringes the
suit design. For this purpose, the plaintiff has provided comparative
depictions of its ―Vat-69‖ and ―Black Dog Scotch Whisky‖ and the
defendant ―Golfer‘s Shot‖, thus:



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24. The intent of the defendant to imitate the design of the plaintiff, it
is submitted, is evidenced by the fact that the defendant was promoting
its product under the ―Pocket Shot‖ moniker, so as to confuse purveyors
of the plaintiff‘s product which was sold as ―Pocket Scotch‖. The
malafide intention of the defendant, it is alleged, is also apparent from
the fact that, till the suit design was registered and proved to be
successful, the defendant was manufacturing and selling its 180ml
―Golfer‘s Shot‖ whisky in the following bottle:



In fact, contends the plaintiff, the defendant was selling its ―Golfer‘s
Shot‖ whisky in 60 ml, 90 ml, 180 ml, 375 ml and 750 ml bottles, all of
which were, till the impugned design came into being, of identical shape
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and configuration, for which purpose the defendant‘s advertisement on
its website, containing the following depiction, has been cited:

With the success of plaintiff‘s 180 ml ―Hipster‖ design, the defendant
started marketing and selling its 180 ml ―Golfer‘s Shot‖ whisky in the
bottle having the allegedly infringing design, even while retaining the
original bottles for all other sizes. This, contends the plaintiff, makes it
clear that the defendant was transparently seeking to capitalise on the
goodwill earned by the plaintiff in the suit design.

25. The plaintiff also seeks to point out, in this connection, that, in its
invoices placed by it on its customers, the defendant was referring to the
whisky sold in all other sizes as ―Golfer‘s Shot whisky‖, whereas the 180
ml product was referred as ―Golfer‘s Shot 180 ml Hipster‖. A sample
invoice has also been placed on record with the plaint. This, asserts the
plaint, indicates that the defendant was, by using the appellation
―Hipster‖ for its 180 ml product, clearly piggybacking on the reputation
of the plaintiff in its ―Hipster‖ suit design.

26. Para 38 of the plaint sets out the following features of the
defendant‘s design which, according to the plaint, imitates the suit
design:
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―(i) The overall shape and configuration of the 'Hipster' i.e. a tall
and a lean bottle as compared to traditional flasks which are broad and
short;

(ii) The symmetrical edges and sides of both products are
identical;

(iii) Distance between the top sealing surface and the shoulder are
identical;

(iv) The dimensions of the bottom length and width of both
products are identical;

(v) Even positioning of the label at the front and back of the bottle
are identical;

(vi) Monochromatic colour scheme i.e. the entire product is Black;

(vii) Rimmed cap of the bottle is identical‖


27. All distinctive elements of the suit design, it is alleged, have been
replicated by the defendant in the impugned design. The similarity
between the two designs is so great that the customer, it is submitted,
would invariably associate the defendant‘s products with the plaintiffs‘,
especially as the products would be placed next to each other on the
shelf. As the defendant‘s product is cheaper than that of the plaintiff, the
plaint asserts that, by imitating the plaintiff‘s design, the defendant is
eating – or rather drinking – into the plaintiff‘s market.

28. Premised on the aforesaid assertion and allegations, the plaint
alleges that the defendant has involved itself in piracy of the plaintiffs‘
registered design within the meaning of Section 22 of the Designs Act.

29. Predicated on the aforesaid, the plaint seeks
(i) a decree of permanent injunction, restraining the defendant
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from dealing, in any manner, in the impugned ―Golfer‘s Shot‖
Barrel Reserve Whisky in 180 ml or in any other size in a bottle
which infringes the suit design, or its overall trade dress and get-
up, as would result in passing off, by the defendant, of its product
as relatable to the plaintiffs, and
(ii) a decree of permanent injunction, restraining the defendant
from promoting or selling its products using the mark/tag line
―Pocket Shot‖ or any other mark/tagline deceptively similar to the
plaintiffs‘ mark ―Pocket Scotch‖,
apart from delivery up, rendition of accounts, damages and costs.


30. The defendant has filed a written statement, by way of response to
the plaint. It is alleged, in the written statement, that the design of the
defendant‘s bottle is significantly different from that of the plaintiffs‘ and
that there is no chance of any confusion between the two. Differences, it
is asserted, may be found in, inter alia , the height, dimensions and
thickness of the product, roundness of shoulders and caps. The written
statement further alleges that the shape and configuration of suit design is
not novel but common to the trade and similar to several publicly known
designs which precede the suit design. Rectangular bottles with round
shoulders, basic rimmed caps and basic monochromatic designs, it is
asserted, are broad features, common to the liquor trade. For this reason,
it is alleged that the registration of the suit design is vulnerable to
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cancellation under clauses (b), (c) and (d) of Section 19(1) of the

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19. Cancellation of registration —

(1) Any person interested may present a petition for the cancellation of the registration of a design
at any time after the registration of the design, to the Controller on any of the following grounds,
namely-
*
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Designs Act, 2000.

31. The written statement also disputes the plaintiffs‘ right to use the
―Hipster‖ tag. A hipster, it is submitted, refers to a person, during the
times of prohibition, who used to carry a hip flask. In any case, submits
the written statement, the defendant is not using ―Hipster‖ as a trade
mark. The submission of the plaintiff with respect to the similarity
between the plaintiff‘s ―Pocket Scotch‖ and the defendant‘s ―Pocket
Shot‖ tag lines, it is submitted, is of no relevance, as the plaintiffs do not
possess any domestic registration of the ―Pocket Scotch‖ mark , and have
also failed to demonstrate any goodwill exclusively associated with the
said mark.

32. The shape and configuration of the plaintiffs‘ suit design are,
submits the defendant, publici juris . There are several liquor brands
which are sold in similar bottles, for which purpose the following
pictorial depiction is to be found in the written statement:

(d) that the design is not registrable under this Act;

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33. It is further submitted that the dimpled base of the plaintiffs‘ suit
design is, again, a purely functional feature which is common to all
bottles of that shape and configuration, and is intended to confer stability
to the bottle when placed upright.

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34. The written statement asserts that no monopoly could be claimed
on such features which were common to the trade and to be found in
several similar brands. Reliance has been placed, by the defendant, on
Section 22(3) of the Designs Act, which allows every ground on which a
registered design could be cancelled as a ground of defence to an
infringement proceeding. It is also pointed out, in this context, that
unlike the Trade Marks Act, the Designs Act does not presume any
validity of a registered design. In its written statement, the defendant has
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in fact itself placed reliance on Diageo v. Great Galleon . The defendant
points out that, in order to plead that the suit design was novel, vis-à-vis
an earlier existing international design no. D562138, the plaintiffs
advanced contentions which would also serve to render the defendant‘s
impugned design novel vis-a-vis the suit design. Expressed otherwise, the
contention of the defendant is that the impugned design is identical to
D562138.

35. The plaintiff, in its synopsis of written arguments in Diageo v.
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Great Galleon , was required to show how the suit design was novel, vis-
à-vis D-562138. The argument of the plaintiffs, in that regard, were
presented in its synopsis of written arguments in Diageo v. Great
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Galleon , thus:

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36. The impugned design of the defendant‘s bottle being identical to
D562138, the defendant‘s contention is that the aforesaid features, cited
by the plaintiff as distinguishing the suit design from D562138, would
serve to equally distinguish the defendant‘s design from the suit design.
If, therefore, on the basis of these features, the suit design can be
regarded as novel vis-à-vis D562138, on the basis of the very same
features, the defendant‘s design would be novel vis-à-vis the suit design.

37. Mr. Chander M Lall, learned Senior Counsel for the defendant,
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pointed out that the coordinate Bench, in Diageo v. Great Galleon ,
accepted these contentions of the plaintiff as making out a case of
novelty of the suit design vis-à-vis D562138. That acceptance, submits
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Mr. Lall, would work in favour of the defendant in the present case, as
the defendant‘s bottle would, for the very same reason, be novel vis-à-vis
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the suit design. Diageo v. Great Galleon , therefore, submits Mr. Lall,
supports, rather than defeats, to that extent, the case of the defendant vis-
à-vis the plaintiffs.

38. As against this, points out Mr. Lall, the infringing product in
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Diageo v. Great Galleon had a design which was identical to the suit
design in all respects. The distinguishing features enumerated in the
tabular statement in para 35 supra , on the basis of which the plaintiff, in
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Diageo v. Great Galleon , sought to distinguish the suit design from
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D562138, would not apply to the impugned design in Diageo v. Galleon
vis-à-vis the suit design, as the two designs were identical. In the present
case, the impugned design, submits Mr. Lall, is identical to D562138
and, therefore, the finding of the coordinate bench of this Court in
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Diageo v. Great Galleon that the suit design was novel would also
apply, equally, to the impugned design of the defendant in the present
case.

39. In this context, the defendant, in the written statement, also pleads
estoppel against the plaintiff. It is contended that the plaintiffs, having, in
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their synopsis of written arguments in Diageo v. Galleon , taken a
specific stand that the suit design was ―totally different from D562138‖,
they could not seek to contend, in the present case, that the defendant‘s
design was an imitation of the suit design. If the defendant‘s design is an
imitation of the suit design, contends Mr. Lall, equally, the suit design
would be an imitation of D562138.
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40. The suit design, it is submitted, is merely the design of a plain
hipflask, which is a thin flask for holding liquids, rectangular in shape
(with or without curved edges) with a cap for fastening and cavities for
pasting/affixing logos and labels of the manufactures. These common
features, it is submitted, could not be allowed to be monopolised by the
plaintiffs, as they seek to do in the present case. The suit design, vis-à-
vis the design of an ordinary hipflask, it is submitted, contains mere
ordinary trade variants. Such incorporation of ordinary trade variants
into an existing design would not render the design new or original.

41. The defendant has also contested, in this case, the plaintiffs‘
contention that the suit design was inspired from a smart phone. In this
context, Mr. Lall submits that, if the suit design was inspired by a smart
phone, the impugned design of the defendant product was certainly not
alike in shape or configuration to a smart phone and was, rather, more
akin to the earlier hipster flasks, which were used during prohibition
days. The very assertion of the plaintiffs that the suit design was inspired
by the design of a smart phone, submits the defendant, is sufficient to
distinguish the suit design from the design of the impugned product of
the defendant.

42. Para 45 of the written statement presents the following
comparative depiction to indicate the difference in the suit design and the
design of the defendant‘s product:


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Para 46 of the written statement proceeds, thereafter, to once again
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emphasise the differences in the design of the defendant‘s bottle vis-à-vis
the suit design, as under:
―46. From a perusal of the above comparison, the following key
differences in the Plaintiff‘s and the impugned designs are evident:

a. Overall Shape & Size- It is stated that the Defendant‘s
product is smaller in width and height as compared to the
Plaintiffs‘ product and thus, resulting in overall smaller size.
The height and width of the Defendant‘s product is 123.3 mm
and 66 mm respectively as compared to the Plaintiffs‘ product
which bears the height and width of 128 mm and 67.5 mm
respectively. It is further stated that the side width (i.e.
thickness of both the products is very different. While the
Defendant‘s product is 30 mm thick, the Plaintiffs‘ product is
only 27 mm thick. Thus, the Defendant‘s product is also fatter.

b. Rounder Edges- It is stated that the Defendant‘s products bear
rounder edges similar to the PETITIONER bottles and flasks
illustrated in the foregoing paragraphs. That the curved
shoulders of the Defendant‘s products significantly
distinguishes it from the Plaintiff‘s design which is more
rectangular in shape.

c. Smaller concave bottom- It is stated that the defendant‘s
products bear smaller concave/dimpled area at the bottom as
compared to the Plaintiffs‘ product is elongated and sleek with
rectangular edges, the Defendant‘s product bear a shorter
dimpled area with curved edges.


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‖


43. In these circumstances, the written statement asserts that the design
of the bottle in which the defendant sells its ―Golfer‘s Shot‖ Whisky
cannot be regarded as either an obvious or a fraudulent imitation of the
plaintiffs‘ suit design, so as to constitute ―piracy‖ within the meaning of
Section 22(1) of the Designs Act.

44. The defendant has also contested the claim of passing off. It is
submitted that the defendant‘s product has a different name, label and
appearance from that of the plaintiffs. There is, therefore, submits the
defendant, no chance of any customer being confused between the
product of the defendant and that of the plaintiffs, or believing that the
product of the defendant is manufactured by the plaintiffs. Each, submits
the defendant, has its own distinct reputation.

45. For all the aforesaid reasons, the written statement contends that
the suit of the plaintiff is liable to be dismissed.

Rival submissions before me

46. Mr. Lall commenced his submissions by stating that he was not
disputing the validity of the suit design, as it stood upheld in Diageo v.
4
Great Galleon , though later, in the course of his submissions, he
somewhat relaxed the magnanimity of his stance.
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th
47. He then invited my attention to order dated 29 April 2022 passed
by a coordinate Bench of this Court in Diageo Brands B.V. v. Whiskin
6
Spirits Pvt. Ltd. , in which the suit design was asserted, against the
design of the bottle in which the defendant, Whiskin Spirits Pvt. Ltd
(―Whiskin‖, hereinafter) in that case, was packing and selling whisky.
The suit was decreed on compromise, as Whiskin modified the design of
its flask to the satisfaction of the plaintiff. As the said decision was
passed on a settlement between the parties, and the product of the
defendant in that case is different from the defendant‘s product before
me, this decision cannot, in my view, be of any serious significance. No
estoppel can be pleaded against either party on the basis of a decree
passed on compromise. Besides, I have been shown the actual modified
bottle of Whiskin in that case, and it cannot be really said to be identical
to the defendant‘s bottle in the present case.


48. Drawing attention to the front view of the suit design, vis-à-vis the
design of the defendant‘s bottle, Mr. Lall submits that the there are
several features between the two which are dissimilar, and which defeat
any plea of infringement. Among other things, he submits that, in the
defendant‘s bottle the distinctive V(
) shape at the neck of the suit
design was absent, the shoulders of the defendant‘s bottle were
drooping/sloped as compared to the straight shoulders of the suit design,
and the defendant‘s bottle was curved, whereas the suit design was flat
on both sides.


6
MANU/DEOR/91454/2022
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49. Mr. Lall next refers to Annexure C of the written submissions filed
by the plaintiffs in which the plaintiffs have sought to demonstrate how
the suit design was novel vis-à-vis the prior registration, by underscoring
the difference between them. He particularly refers to the defence of the
plaintiffs vis-à-vis certain prior designs, of which one also stands noted in
para 35 supra . Apart from the said prior art, Mr. Lall refers to the
following tabular statements contained in the written submission of the
plaintiffs, vis-à-vis other prior art form:

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plaintiffs‘ defence in that regard, Mr. Lall points out that while, in their
4
written submissions in Diageo v. Great Galleon , the plaintiffs contended
that the design of the prior art was ― totally different from plaintiffs‘
design‖, the plaintiff had consciously modified the said submission in the
present case, by averring that the prior art was ― different from plaintiffs‘
design‖.

51. Mr. Lall submits that the sweep of infringement analysis has
necessarily to be equal to the sweep of analysis of novelty of the suit
design vis-à-vis prior art. The perspective on the basis of which the
aspect of imitation has to be decided, he submits, is not that of an average
customer, as in the case of trademarks, but of an interested eye, i.e. an
eye who is aware of the prior art. The interested eye, submits Mr. Lall,
decides both the aspect of novelty and infringement. For this purpose, he
relies on the following enunciation, to be found in para 10 of the report in
7
B. Chawla v. Bright Auto Industries :
8
―10. In Phillips v. Harbro Rubber Company , Lord Moulton

7
AIR 1981 Del 95 (DB)
8
(1920) 37 RPC 233
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observed that while question of the meaning of a design and of the fact
of its infringement are matters to be Judged by the eye, (sic) it is
necessary with regard to the question of infringement , and still more
with regard to the question of novelty or originality, that the eye
should be that of an instructed person , i.e., that he should know what
was common trade knowledge and usage in the class of articles to
which the design applies. The introduction of ordinary trade variants
into an old design cannot make it new or original.‖
(Emphasis supplied)

52. A second distinction between the approach to be adopted in design
infringement cases vis-à-vis that to be adopted in trade mark
infringement cases, submits Mr. Lall, is that, unlike trade mark
infringement cases, which rely on the impression of a person of average
intelligence and imperfect recollection, design infringement has to be
decided on the basis of face-to-face comparison of the two designs. There
is, therefore, no scope of applying the ―imperfect recollection‖ test. Mr.
Lall relies, for the said proposition, on the decision of the Chancery
Bench of the High Court of UK in Negretti & Zambra v. WF Stanley &
9
Co . , particularly on the following passages therein:
―The alleged infringement is practically identical with the registered
drawing, with the exception that, instead of the face of the instrument
where the thermometer registers being flat , the Defendants have a V-
shaped face, the mercury tube being seated at the bottom of the V. It
appears from the correspondence which has been put in evidence that
the Defendants were asked in 1922 by a firm known as the Jackson
Electric Stove Co., who had been customers of the Plaintiffs, to submit
a section view of a thermometer which would overcome the
registration difficulty, it having been pointed out that the Plaintiffs had
a registered Design, and one of the Plaintiffs' thermometers having
been handed to the Defendants for the purpose of providing the sketch
which was asked for in this letter. It is quite apparent that the
Defendants were asked to supply, and did supply, thermometers
which were to be as like the Plaintiffs‟ as possible, subject to such
alterations as the Defendants might think sufficient to get them out of
infringing the Design . The Plaintiffs' article has been a very successful
one. According to the evidence, after the war, 500 were sold in 1922;

9
1925 (42) RPC 358
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1,970 in 1923; 3,340 in 1924; and 3,400 in the first six months of the
present year. It does not look as if the Defendants' conduct has had any
very damaging effect upon the Plaintiffs‘ sales, although that, of
course, is quite irrelevant to what I have to decide.

The Defendants allege that this Design is not new and original,
and that they have not infringed it. A number of prior documents and
prior articles have been put in for the purpose of proving prior
publication, and from those it is quite plain that stove thermometers
were old ; inlet tubes at right angles to the thermometer were old ; the
inclined faces of the scale of the thermometer to the stove were also
old ; and there is really nothing new about the present Design, except
possibly the combination of the two lugs for the purpose of screwing
the instrument on to the stove face in an article in which the inlet tube
of the thermometer was at right angles to the thermometer itself . The
Plaintiffs‘ instrument, like the Defendants', is intended to be used with
the thermometer lying in a horizontal position, so that any person
standing in front of the stove can read it, the reading being facilitated
by reason of the inclined scale attached to the stove. There is nothing
whatever in the drawing of the Plaintiffs‘ Design, when the heat
figures are eliminated, to show whether the thermometer is intended to
be used in a horizontal or in a vertical position.

The two nearest prior publications are, first, a thermometer
made by the Defendants prior to 1913, which has been marked ― No.
7, ‖ in which the attachment containing the thermometer bulb is at
right angles to the thermometer itself , the attachment being, in the size
which has been put in, cumbrous, and it having a ball-shaped end to it
where it adjoins the thermometer, and the thermometer being angled
as in the Defendants' article. This particular one that has been proved
is intended to be inserted in a stove, or some similar article, the
thermometer in its vertical position being at right angles to the inlet
tube, which is inserted into the stove, and the face of the thermometer
being angled at much the same degree from the plane of the apparatus
into which it is to be inserted, as is the case in the Plaintiffs‘ Design.
The other one is in a catalogue of the Defendants, at page 43, being
figure 148. That, again, shows a thermometer intended to be used in a
vertical position, a right-angled inlet, and the face of the thermometer,
again, is fiat, as is the case of the registered Design. There are certain
catalogues which have been put in showing a large number of
thermometer Designs, where many of the features, if not all of the
features, of the Plaintiffs‟, can also be found, though not, of course, all
in the same combination .

On the question of validity, the issue that I have to determine is
whether this is an attempt to get a sort of patent advantage, having
regard to the character and function of the article, as distinct from the
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mere pictured Design. That the Plaintiffs‘ article is commercially of a
size and character which is very successful has, of course, been amply
demonstrated; but one must not be misled by the fact that the
Defendants have made these articles of practically the same size and
for the purpose of being used in an exactly similar manner to that
shown in the registered Design, and to that used in practice by the
Plaintiffs.

8
In Phillips v. Harbro Rubber & Co. , there is a judgment of
Lord Moulton which is constantly cited. At page 239 he says :
Although a Design may be for an article of special form or
configuration,. ―there is nothing in the definition which relates to
construction, and therefore, ―however constructed , an article of the
same configuration is equally within or without the scope of a
registered Design , and , on the other hand , a Design ― cannot he
rendered new or original merely by a change of the mode of
construction of the article. This is a consideration of the gravest
importance, and has been insisted upon again and again by the Courts.
No better illustration can be given than the weighty judgment of the
10
late Lord Parker (then Mr. Justice Parker ) in Pugh v. Riley at page
202 . A registered Design is not in any way a minor type of patent. It is
something that is protected in respect of its appearance or form alone.
It is for this reason that all attempts to make registered Designs cover
modes of manufacture have rightly failed, and that the Courts have so
invariably insisted on. the principle that Designs must be judged by the
eye alone. But, while questions of the meaning of a Design and of the
fact of its infringement are matters to be judged of by the eye , it is
necessary with regard to the question of infringement , and still more
with regard to the question of novelty or ― originality , that the eye
should be that of an instructed person , that is, that ― ho should know
what was common trade knowledge and usage in the class of ― articles
to which the Design applies. The introduction of ordinary trade
variants into an old Design cannot make it new or original . For
example, if it is common practice to have or not to have spikes in the
soles of running shoes , a man does not make a new and original
Design out of an old type of running shoes by putting spikes into the
soles. The working world, as well as the trade world, is entitled at its
will to take, in all cases, its choice of ―ordinary trade variants for use
in any particular instance , and no patent and ― no registration of a
Design can prevent an ordinary workman from using or ― not using
trade knowledge of this kind. The importance of insisting upon this
―principle is emphasised by the fact that under our legislation
registered ― Designs are kept secret. No member of the public has the
right to inspect a ―registered Design during the existence of the
copyright . It is not my intention to dwell on the extraordinary

10
(1912) 29 B.P.C. 196
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character of the legislation, which was ―apparently inspired by the
desire to prevent rivals learning of patterns of lace ' or textile articles
which were intended to be brought into the market in the immediate
future. But if an ordinary workman is thus to be kept in ― ignorance of
what be may or may not do without infringing the unknown ― rights of
registered proprietors of designs , it is obviously the duty of the ―
Court to take special care that no design is to be counted a ‗ new or
original 'design / unless it is distinguished from what previously
existed by something ―essentially new or original which is different
from ordinary trade variants which have long been common matters of
taste or choice in the trade. ‖ In my judgment the Plaintiffs ‟ Design is
not so distinguished . It seems to me that what the Plaintiffs have done
is to make a neat and handy instrument similar in character as
compared with many which went before , but which contains no
novelty , within the meaning of the Act , which renders it a new and
original Design as distinct from the many very similar Designs which
had previously existed , and all that has been done has been to apply
ordinary trade variants or trade adjustments well known and common
for the purpose of making an instrument useful for the purpose for
which it was intended and not rendering it qua configuration or design
anything substantially new and original at all.

A similar point came up for decision in Allen West & Co., Ltd,
11
v. British Westing house Electric and Manufacturing Co ., Ltd . .
The passage relied upon by the Defendants begins at page 162: ―The
encouragement given by the patent law to those who produce new and
useful inventions, and by the law relating to designs to those who
produce new and original designs, is primarily to advance our
industries, and keep them at a high level of competitive progress ; but ,
in administering these provisions, it is, I think , most important to bear
in mind the fact that they are not intended, and ought, not to. be.
allowed, to paralyse or impede the natural and normal growth and
development of the manufactures which they are intended to benefit. I
think this case ought to be determined upon the question whether the
difference in the registered Design of the right –angled finger support
is or is not sufficient to make it an original Design within the meaning
of the Act , or , whether , on the contrary, it is not an ordinary and
natural alteration of the shape of a known article for the purpose of
fitting it into a case or apparatus in which it is desired that it shall
12
work . In the case of Bayer' s Design , Lord M acnaghten , in giving
judgment in the House of Lords , said : ‗Although a Design , properly
‗so-called, and duly registered, may incidentally protect a method of
manufacture , it is clear that a mere method of manufacture cannot be
registered as a Design under the Act.‖ Later on in the judgment it is

11
(1916) 33 R.P.C.157
12
( (1908) 25 R .P . C. 56)
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stated how far, if at all , the question of the utility of the article or
product assists on the question of novelty , and I do not propose to
read it through again. At page 164, at line 35, the judgment proceeds:
―I now proceed to examine the matter a little more closely on this
question of angle. This is a Design for shape or configuration. I agree
it must be looked at by a person with knowledge of what has gone
before, and with knowledge of what the article, the subject matter to
which the Design applies, is to be used for. The Design as a whole is
substantially identical with the anticipation. Every single part of it is
the same, excepting the angle of the finger support. It is perfectly true
that if you take the outline, the alteration of that angle makes a certain
amount of difference, but, qua Design of the thing as a whole , the
difference is small. The question I have to decide is whether the
alteration is a workshop alteration such as one would expect any
competent workman to make as soon as he knew the shape of the
support on to which this thing had to be screwed, or whether the
Design as a whole is a new or original one within the meaning of the
Act. ” Then it is pointed out that not every change of length, breadth
or configuration in a simple article is sufficient to constitute novelty.

Mr. Trev or Watson in his argument for the Plaintiffs referred
to three tests, not for the first time in this Court, as to whether there is
sufficient novelty to constitute a valid Design in this case. He said ,
first : Could the infringement be mistaken for the registered Design ?
The answer to that is, that it certainly could if the exact details of the
device are not considered. Secondly, he asked: Whether the
Defendants ‘ article would ever have existed if it had not been for the
Plaintiffs‘ Design ? I think he is entitled to say, having regard to the
Plaintiffs‘ correspondence , that the answer is that it probably would
not. Thirdly, he asks: Is the infringement more like the registered
Design than any article which previously existed ? Again, the answer
is , that it is . But, in my opinion, none of those tests in the present
case is really at all conclusive.

The Plaintiffs, in my judgment, have produced a useful article
of commerce for a particular purpose, which, from its smallness and
neatness, is readily distinguishable from the larger thermometers
which had gone before; but that, of course, is wholly immaterial. The
fact that the Plaintiffs have hit upon a useful shaped and useful sized
thermometer for the particular purpose in hand is no reason in law
why the Defendants should not even copy such features of that Design
as were common in the trade, nor is it any reason why they should not
add to such Design any ordinary trade improvement or trade variant
which is obvious as soon as the particular use to which the article is
intended to be put is appreciated . Again, the reason why the alleged
infringement here is more like the Plaintiffs' article than the other
Designs which have been shown is principally really concerned with
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the question of size. As a matter of fact, the only real addition to the
previous pictured knowledge of these thermometers in the Plaintiffs‘
Design is the fact that it is attached to the oven door by two lugs,
instead of two holes in the face of the thermometer case itself . All that
in thermometers of different size used for different purposes is old.
The right-angled inlet tube, the inclined face, the flat face, are all
matters of old common knowledge. For these reasons I am of opinion
that the Plaintiffs ‘ Design is not a new and original Design, within
the meaning of the statute. The second matter which has been
discussed is the question of infringement. If I am wrong as to the
validity of this Design, and as to its novelty and originality, then the
question arises as to whether the Defendants' article is an infringement
of the Plaintiffs' Design. In a Design of this very humble character,
where the Design itself is very close to Designs which have gone
13
before, as Lord Halsbury said in the Gramophone Case * the
Plaintiffs, in order to succeed in infringement, must show' that the
article complained of is an exact reproduction of the Plaintiffs‘
Design, and that any difference, however trifling or unsubstantial, will
or may protect it from infringement. In the present case there is a
distinct difference between the Plaintiffs‘ article manufactured and as
shown in the Design and the article complained of infringement. The
novelty claimed in the Certificate of Registration being the shape or
configuration of the thermometer having the scale face projecting and
being inclined as shown in the picture is a novelty which is not
exactly or in fact, reproduced in the Defendants' instrument. The
Defendants have a perfectly common V-shaped face to their scale
plate, and that, having regard to the extreme slightness of the
difference between this Design and the thermo- meters which have
preceded it, if the Design be valid, is sufficient, in my judgment, to
prevent the Defendants' being an infringement ; so that, if it were
necessary to decide the question of infringement, on the assumption
that the Design is valid, I think the Defendants are, again , entitled to
succeed; but, in my view', the real question here is validity, and , in my
judgment, the Plaintiffs have not answered the tests required of them
for the purpose of sustaining this Design, and the action must, in
consequence, be dismissed with costs‖
(Emphasis supplied)

53. On the basis of the aforesaid decision, Mr. Lall contends that in the
case of design infringement of a humble design, infringement can be said
to exist only if the defendant‘s design is virtually identical to that of the
plaintiffs.

13
1911 RPC 221
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54. Mr. Lall has also relied on the following passages from the
judgment of a learned Single Judge of this Court in Carlsberg Breweries
14
A/S v. Som Distilleries and Breweries Ltd. :
―157. Before comparing the registered design of the plaintiff in its
beer bottle, with the design adopted by the defendant in respect of its
beer bottle, it would be useful to also take into consideration the tests
laid down and applied by the courts in the decisions relied upon by the
defendants. The leading case relied upon by the defendant is that of
13
Gramophone (supra). While rejecting the claim of the plaintiff for
design infringement, the House of Lords (Lord Loreburn LC) held that
the product of the defendant - a cabinet, ― is a different combination of
familiar contrivances ‖. He further observed that if the suggested
novelty lies in the detailed arrangements of the parts, quite a small
change in the arrangements make a real difference. The Earl of
Halsbury in the same case observed that:

“……….it must be the exact thing; and or any difference,
however trifling it may be or however unsubstantial, would
nevertheless protect it from being made the monopoly of the
particular designer who thought proper to take it.”

158. Lord Shaw, in his opinion, emphasized the aspect of novelty
and originality which alone would render the design entitled to
protection.

9
159. In Negretti (supra), the claim of the plaintiff for design
protection was rejected by holding that the plaintiff's design was not
new or original. There was only a slight difference between the design
of the plaintiff and the design of thermometer which had preceded it.
The Court also held that there was sufficient distinction between the
defendant thermometer and the design of the plaintiff.

8
160 . In Phillips (supra), the House of Lords rejected the claim of
the plaintiff for a novel design in respect of rubber pads and plates for
heels of boots and shoes on the ground that the same was not new or
original, since it is not distinguishable from what previously existed. It
was merely an ordinary trade variant. The House of Lords further held
that to determine the question of infringement of a registered design,
the eye should be of any instructed person i.e. he should know what
was common trade knowledge and usage in the class of articles to
which the design applies.


14
2017 SCC OnLine Del 8125 : (2017) 70 PTC 413
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15
161 . In Gaskell & Chambers Ltd v. Measure Master Ltd. . (supra),
the Court held that the issue of validity of registered design should be
decided on a comparison and features which appeal to and are judged
by the eye. It is often helpful to look at what was available before the
priority date of the registered design as the eye of the interested
addressee could be drawn to details, only if the registered design
differs from the prior art by such details. It is only when the new
design differs radically from the previous designs, that the interested
person's eye would more likely concentrate on and more likely
remember the general form of the new design rather than the details.

16
162. In Repetition Woodwork Co. v. M Briggs , the comparison of
the designs was in respect of combined press for neckties - or the like,
and box to contain collars and other articles. The Court held that
although each one of the differences in the two designs when taken
separately may well be said to be not very substantial, yet when taken
all together they cause the defendant's box, both when closed and
when opened, to present an appearance substantially different from
that of the plaintiff's design. Thus, apart from comparison of the
different parts of the article in question, an overall view is also
required to be taken.

17
163. In Polar Industries Ltd. v. Usha International Ltd. since the
design registration claim by the plaintiff pertained to the entire article
as a whole, namely, a table fan/portable fan, the Court held that overall
view of the registered designs of the plaintiff - comprising of
configuration, shape and ornamentation will have to be considered for
the purpose of comparison. The component parts of the registered
design of the plaintiff could not be viewed in isolation to determine as
to what are its striking features.

18
164. In Dabur India Ltd. v. Rajesh Kumar , the claim for design
infringement made by the plaintiff was rejected by the Court by
observing that the hair oil bottles of the plaintiff are common bottles
being used by several other companies for marketing their hair oil and
other products. These bottles have similar shape with slight variation
in form which have pre-existed the registration of design of the
plaintiff. In that case, the design registration obtained by the plaintiff
was not in respect of any peculiar feature of the bottle registered as a
design. The whole bottle was got registered as a design. The Court
held that the plastic bottle got registered as a design by the plaintiff
was a very common shape, and that it did not have any peculiar eye
catching designing or shape. To the same effect is the decision in Amit

15
1993 RPC 76
16
41 RPC 449
17
2000 (20) PTC 469 (Cal)
18
2008 SCC OnLine Del 393 : 2008 (37) PTC 227
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19 19
Jain . In Amit Jain , the Court held that unless the plaintiff had any
claim qua specific ratios of the dimensions which were not pre-
existing, there could be no novelty in the bottle.

20
165. In Steelbird Hi-Tch India Ltd. v. S.P.S. Gambhir , the aspect
of novelty and originality was explained to mean that there must be a
mental conception expressed in a physical form which has not existed
before, but has originated in the constructive brain of its proprietor and
that it must not be trivial or infinitesimal in degree, but in some
substantial degree.

166. In Dover Ltd. v. Nurnberger Celluloidwaren Fabric Gebruder
21
Wolff , the Court held that a slight trivial or infinitesimal variation
from the pre-existing design will not qualify for its registration, and
that the change introduced should be substantial. At the same time, the
newness may be confined to only a part of the design of the article-but
that part must be a significant one and it should be potent enough to
impart to the whole design a distinct identity, unless registration is
sought for the said part alone.‖


55. The submission of Mr. Sibal that the suit design was based on the
shape of a smartphone, submits Mr. Lall, is self-defeating, as it cannot be
said, howsoever one looked at it, that the defendant‘s bottle was shaped
like a smartphone. In fact, reiterates Mr. Lall, the very features which
were cited by the defendant as imbuing, to the suit design, novelty over
prior art, such as the V shape, broad shoulders, etc, were not to be found
in the impugned bottle of the defendant. Mr. Lall has, in this context,
relied on para 38 of the plaint, which reads as under:
―38. A bare perusal of the above comparison reveals that
Defendant's Infringing Product 'Golfer's Shot' Barrel Reserve Whisky
in 180ml is identical / obvious and fraudulent imitation of the Plaintiff
No. 1 's registered design of Hipster bottle and identical / obvious and
fraudulent imitation of overall trade dress and get up of the Plaintiffs'
Hipster Products. Defendant has deliberately and fraudulently copied
the following features of the Plaintiffs' design:


19
2008 SCC OnLine Del 1293 : (2009) 39 PTC 104 (Del) (DB)
20
2014 SCC OnLine Del 821 : 2014 (58) PTC 428 (Del)
21
27 RPC 498
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i. The overall shape and configuration of the 'Hipster' i.e.
a tall and a lean bottle as compared to traditional flasks which
are broad and short;+

ii. The symmetrical edges and sides of both products are
identical;

iii. Distance between the top sealing surface and the
shoulder are identical;

iv. The dimensions of the bottom length and width of both
products are identical;

v. Even positioning of the label at the front and back of
the bottle are identical;

vi. Monochromatic colour scheme i.e. the entire product
is Black;

vii. Rimmed cap of the bottle is identical.‖


56. These features, submits Mr. Lall, cannot constitute a legitimate
basis to allege that the defendant‘s bottle infringed the plaintiffs‘ suit
design. Mr. Lall cites, in this context, paras 176 to 179, 182 and 183 of
14
Carlsberg Breweries , which read thus:
―176. The next question that arises for consideration is that even if
the plaintiff's design registration is presumed to be valid, i.e. that the
indentations/grooves found on the plaintiff's beer bottle are presumed
to be not only novel, but also appealing to the eye and at the same
time, as not being functional, whether the defendant's bottle design
prima-facie infringes the plaintiff's registered design.

177. Once again, I, prima-facie, find that the plaintiff has not been
able to make out a case of design infringement. When one compares
the beer bottle of the plaintiff as a whole with the beer bottle of the
defendant - as a whole, they both appear to be like any other ordinary
beer and other beverage bottles available in the market. The
defendant has placed on record photographs of several other beer and
other beverages brands having similar shapes of bottles, such as Bud
Weiser, Staropramel, Podkovan, Ursus, Glenfiddseh, Goldur, Praha,
etc. It needs consideration whether the indentations/grooves in the
plaintiff's bottle design, and those found in the defendant's bottle,
when compared, lead to the prima-facie conclusion that the
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defendant's indentations/grooves are a fraudulent and obvious
imitation of the plaintiff's bottle design. The two bottles when viewed
from different angles, by placing them side by side appear as follows:



178. The above comparison has been taken from the documents
filed by the defendant at pages 651 and 652 of the record. I may
observe that the plaintiff has not filed a similar comparison. The
plaintiff has, however, filed the comparison of photographs taken from
the same angles, and they have been taken note of in paragraph 3
above.

22
179. As held in Castrol , not every resemblance would be
actionable at the instance of the registered proprietor of the design. At
the same time, imitation does not mean duplication. The copy
complained of need not be an exact replica. While comparing, it is
necessary to break down the article into parts for descriptive

22
1994 SCC OnLine Cal 303 : (1996) 16 PTC 202
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(Emphasis supplied)


57. Mr. Lall submits that the shape of the defendant‘s bottle was
inspired by the shape of the hipflask, and not by the shape of the
smartphone. He draws my attention, in this context, to para 36 of the
written statement filed by the defendant, which provides a picture of a
hipflask thus:


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58. In the above context, Mr. Lall relies on the following passage from
18
the judgment of a learned Single Judge of this Court in Rajesh Kumar :
―11. In cases of design, the Court while granting interim injunction
must keep in mind that the design must be validly registered and there
must be some novelty and originality in the designs sought to be
protected and it must not have been republished. No specific novelty
has been mentioned by the plaintiff in the design of the bottle, neither
any specific novelty has been mentioned in the registration certificate.
The registration certificate only gives bottom view, top view and side
view of the bottle. There is no specific dimensional ratio of the bottle
given in the design as bottles are manufactured by most of the
manufacturers for containing specific quantity of liquid by
measurement. Normally these bottles are made 50 ml, 100 ml, 200 ml,
etc. Since all the manufacturers manufacture bottles for such
quantities, the bottles of same quantity are bound to have almost same
height if they have same bottom circumference. Unless, plaintiff had
any claim over specific ratios of the dimensions which were not pre-
existing, there can be no novelty in the bottle. Similar designs are
being used by many leading companies from the time much before the
registration of this design by the plaintiff. I, therefore, consider that the
plaintiff is not entitled for interim injunction. The application of the
plaintiff is hereby dismissed.‖


59. At this point, Mr. Lall resiles somewhat from his initial submission
that he would not be questioning the validity of the plaintiff‘s suit design.
He draws my attention to para 40(c) of the plaint, which reads as under:
―40. The dishonest adoption and mala-fide intention on part of the
Defendant is reflective from the following facts:

*
c. The shape and configuration of the design of the
Infringing Product is obvious imitation of Plaintiffs' registered
design of Hipster. All the essential features of the Plaintiffs'
registered design of Hipster have been found to be present in
the design of the bottle of Defendant's Infringing Product.‖

Thus, submits Mr. Lall, the plaintiff has accepted, in the plaint, that all
the essential features of the suit design were present in the allegedly
infringing design of the defendant‘s bottle. The defendant‘s bottle being
identical in design to the prior art cited in para 35 supra , Mr. Lall submits
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that all the essential features of the said prior art were, even as per the
admission in para 40(c) of the plaint, present in the suit design. This,
rendered the suit design lacking in novelty and, therefore, invalidated it.
This argument was not available to the defendant in Diageo v. Great
4
Galle on as the design of the impugned flask in that case was identical to
the suit design. For this reason, submits Mr. Lall, in view of the
admission – though couched as an allegation – contained in para 40(c) of
the plaint, the suit design was rendered invalid for want of novelty vis-à-
vis the prior art cited in para 35 supra. The admission in para 40(c) of the
plaint, submits Mr. Lall, stands reiterated in the following words in para
42 of the plaint, which reads as under:
―42. It is submitted that the Defendant has copied not only the
Plaintiffs' registered design but also the distinctive elements of the
Plaintiffs' overall trade dress and get up. The products of the Plaintiffs
and the Defendant when compared as a whole, it becomes evident that
the Defendant's Infringing Product is identical / deceptively similar in
shape, configuration to Plaintiffs' registered design and dishonest
adoption of overall trade dress and get up of the Plaintiffs' Hipster
Products.‖


60. Emphasising the fact that, in order to contest an application
seeking interlocutory injunctive relief, the defendant is only required to
set up a credible challenge to the validity of the suit design, Mr. Lall
submits that, in the facts of the present case and in view of the
submissions advanced by him, a credible challenge to the validity of the
suit design in the present case had been made by the defendant. In that
view of the matter, even if the design of the defendant‘s product were to
be treated as infringing the suit design, the plaintiffs would nonetheless
not be entitled to an injunction.

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4
61. Mr. Lall next refers to para 43 of Diageo v. Great Galleon , on the
aspect of balance of convenience, which reads as under:
―43. The balance of convenience also lies in favour of the
Plaintiffs. The Defendant was admittedly selling its products only in a
limited geographical space viz. in Madhya Pradesh. It is an admitted
position that Defendant‘s Bottles were being marketed for only a few
weeks, before the ad-interim injunction was granted to the Plaintiffs
on 23rd February, 2021, and the impugned design has not been sold
since. Mr. Lall, upon being queried by the Court, stated that since the
injunction, the Defendant has been selling its product in another bottle
which is dissimilar in design to the Hipster, and an application to this
effect had also been filed before the Court seeking to modify the
design of its bottle. It is also noted that there is no pleading by the
Defendant that its entire business would shut down as a consequence
of the injunction. Hence, as such, it cannot be said that the
Defendant‘s business has been severely impacted by the injunction.‖

4
The considerations noted in para 43 of Diageo v. Great Galleon , submits
Mr. Lall, do not apply to the present case.

62. Finally, Mr. Lall submits that the concept of a ―Hipster Flask‖ is as
old as the hills. He has invited my attention to literature placed on record
by the defendant, which cites the following quotation from an issue of the
nd
New York Tribune dated 22 December 1920:
"How can twenty-five men keep Chicago dry, when it would take that
any to watch the hipsters in one hotel dining room?" This is the
question heard among those who already have obtained table
reservations.‖


63. Thus, submits Mr. Lall, ―Hipster‖ was an expression used to
denote persons who carried liquor flasks on their hips. Mr. Lall has also
referred to the following literature, to be found at the website
https://www.jacksontrophies.com/blog/flask-history-why-were-drinking-
flasks-invented:
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― When were hip flasks invented?

The curved designs you see today were invented in the 18th century.
They were popular with the gentry (the elite social class of the time).
High-quality flasks were made from silver and glass, but cheaper ones
made from pewter were also available.

Pewter contains dangerously high levels of lead. Unfortunately for
some, the dangerous metal was leaking into their containers and
causing brain damage. You can still buy pewter flasks, but thankfully,
they no longer include lead ... Before their invention, women used to
smuggle makeshift flasks (often made from pigs bladders) onto British
warships. They would fill them with alcohol and hide them under their
petticoats.

Why were hip flasks invented?

Hip flasks were invented to make smuggling alcohol easier. Their
curved shape makes them easy to carry against your hip or thigh
without anybody noticing. Most flasks also have a captive top with a
hinge which prevents you from losing the small lid ....

Is carrying a hip flask illegal?

In the UK, it is not illegal to carry or drink from a hip flask in public
places. In America, it is illegal in some places due to open container
laws.

Hip flasks and the Prohibition

During the U.S prohibition in the 1930s, the US government banned
the sale of both hip flasks and cocktail shakers.

The ban was put in place because more people purchased a hip flask
within the first six months of the prohibition than they had in the last
10 years.

Why did the prohibition start?

Alcohol was banned completely in America between 1920-1933. This
was driven by various religious organisations who thought banning
alcohol would reduce crime and violence rates, and raise religious
quality in America.

It didn't work ...

Banning alcohol did not go the way the US government had hoped ....
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it led to lost government revenue from alcohol tax and caused a lot of
people to move on to heavier substances instead.

Throughout the prohibition, alcohol consumption gradually rose back
to around the same level as it was before the ban anyway.

But it did give us some great stories and rich history ...

The high demand for alcohol birthed many dangerous and gangs and
gangsters, including Al Capone, who is infamous for illegally brewing,
distilling and distributing beer and liquor. It also led to the creation of
speakeasies, illegal bars where people would drink alcohol in secret.

Hipsters & Bootleggers

Due to the high tensions and serious penalties surrounding alcohol
usage, many people used hip flasks to hide their drinks from officials.
People who carried hip flasks were referred to as "hipsters".

A lot of men and women would conceal their flasks within their boots,
which is where the phrase "bootlegger" comes from too.‖


64. For all the aforesaid reasons, Mr. Lall contends that the design of
the flasks/bottles in which the defendant sells its product cannot be
treated as infringing the suit design, so as to entitle the plaintiffs to an
4
interlocutory injunction. The decision in Diageo v. Great Galleon , he
submits, was with respect to an entirely different product which was
identical, in shape, size and configuration to the suit design. That
decision, therefore, submits Mr. Lall cannot be of assistance in the
present case.

Contentions of Mr. Sibal

65. Mr. Amit Sibal, at the very outset, disputes Mr. Lall‘s contention
that the tests for determining infringement, in the case of trademarks and
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designs, is different. While Mr. Lall had sought to contend that novelty
as well as infringement, in the case of a registered design, had both to be
tested on the anvil of the instructed eye, Mr. Sibal would submit that,
while the novelty of the design had to be tested on the basis of the
instructed eye, the aspect of infringement had to be examined from the
point of view of an average purchaser. Mr. Sibal has drawn my
attention, in this context, to paras 67 and 68 of the decision in Diageo v.
4
Great Galleon , which cites the earlier decision of this Court in
20
Steelbird and the High Court of Calcutta in ITC Limited v. Controller
23
of Patents and Design :
― 67. Coming back to the concept of ‗new and original‘, which now
stands clarified, the Court turns its eye to criteria for determining the
same. The test for determining novelty under designs law is no longer
20
res integra, and has been observed by this Court in Steelbird , as
follows:

―It is rightly held in the cases decided that in the matter of
novelty the eye is to be the ultimate test and the determination
has to be on the normal ocular impression. In order to know its
newness or originality it is necessary that a design identical
with or even materially similar to the relevant design should
not have been published or registered previously. A slight
trivial or infinitesimal variation, from a pre-existing design will
not qualify it for registration. Taking into account the nature of
the article involved, the change introduced should be
substantial. It is not necessary to justify registration that the
whole of the design should be new, the newness may be
confined to only a part of it but that part must be a significant
one and it should be potent enough to impart to the whole
design a distinct identity, unless registration is sought for the
said part alone
(Emphasis Supplied).‖

23
68. The Calcutta High Court‘s discussion on the same in ITC
(supra), too, is of assistance in this regard, which is extracted as
follows:


23
2017 SCC OnLine Cal 415 : (2017) 71 PTC 178
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―The test of novelty is the eye of the judge who must place the
two designs side by side and see whether the one for which
novelty is claimed is in fact new. It is a matter of first
24
impression. In The Wimco Ltd. v. Meena Match Industries ,
the Court held that ―in the matter of novelty the eye has to be
the ultimate arbiter and the determination has to rest on the
general ocular impression. The court has to consider and look
at the two designs in question with an instructed eye and say
whether there is or there is not such a substantial difference
between them that which has been published previously and
the registered design to say that at the date of registration that
was not published in India previously.‖


66. It is the purchaser‘s perception which, therefore, according to Mr.
Sibal, is determinative of the aspect of infringement. The purchaser has
no knowledge of prior art. As such, prior art can form no part of
consideration by the Court while assessing whether the defendant‘s
design infringed the design of the plaintiffs. Mr. Sibal has, in this
7
context, also relied on para 11 of B. Chawla and paras 54 to 56 of
4
Diageo v. Great Galleon , which read thus:
7
B. Chawla

―54. The standards for comparison and substantive examination

24
AIR 1983 Del 537
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have not been met for any single prior art shown to the court. Whether
the cited drawings/prior art were applied to articles or not, is not
known, as no material has been placed on record to prove the same.
Although the Court is not looking for the physical article for
comparison, as prior art need not necessarily be commercially or
physically available, nonetheless, the drawings relied upon by
Defendant must at least provide a perspective view for clarity. It is
also to be remembered that 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 relied upon must
exhibit clarity of application to a specific article which is capable of
being judged. Understanding of a 3D design can be perceived only 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:


55. For this reason, some of the prior publications shown by the
Defendant cannot be relied upon. Nonetheless, to form a prima facie
view, each prior art, published prior to 12th December, 2017, (i.e., the
date of Plaintiffs‘ design registration) has been examined. To
illustrate, a few of the comparisons made by the Defendant are
extracted below:

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56. Each one of above has visible dissimilarities when compared to
Plaintiffs‘ Registered Design. The Defendant, in fact, painstakingly
took the Court through 14 prior arts, to which the Plaintiffs further
filed a detailed reply, negating each comparison on various grounds.
The Court has examined each of these individually. It would not be apt
to write a separate analysis for each; but it is fitting to say that the
Court has observed that indeed, the pictures, as shown, differed from
the Plaintiffs‘ Registered Design in terms of rounded/drooping
shoulders; bulbous/curved walls, shorter/longer neck; length; and
existence of a false bottom instead of a dimpled bottom. It must also
be mentioned that, since the prior arts so filed were 3D articles, but
depicted in 2D images, the pictorial illustrations were unclear so as to
visualise the ‗appeal to eye‘ factor.‖

67. Section 22 of the Designs Act, points out Mr. Sibal, identifies, as
the test for design infringement, ―obvious imitation‖ and ―fraudulent
4
imitation‖. While the impugned design in Diageo v. Great Galleon was
an obvious imitation of the suit design, the impugned design in the
present case, submits Mr. Sibal may not be an obvious imitation of the
suit design but was certainly a fraudulent imitation thereof. Mr. Sibal
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seriously contests the submission of Mr. Lall that the impugned design
was similar to the design of a hipster flask. In fact, he submits, the
distinguishing features of the impugned design, vis-à-vis the design of a
hipster flask themselves brought the impugned design closer to the suit
design. There was, therefore, he submits, clear fraudulent intent on the
part of the defendant. To drive home the submission that the test to be
applied in the case of design infringement was that of the perception of
an ―average purchaser‖, Mr. Sibal relies on para 24 of the report in
25
Videocon Industries Ltd. v. Whirlpool of India Ltd. and para 9 of the
26
report in Cello Household Products v. Modware India , rendered by a
Division Bench and a learned Single Judge of the High Court of Bombay
respectively, which read thus:

25
Videocon Industries

"24. The next task of the Court is to judge the similarity or
difference through the eye alone and where the article in respect of
which the design is applied is itself the object of purchase, through the
eye of the purchaser . Thus in the case of Benchairs Ltd. v. Chair
27
Center Ltd . where the article to which registered design was applied
was a chair. Russel L.J. said:

―As we see it, our task is to look at these two chairs, to observe
their similarities and differences, to see them together and
separately, and to bear in mind that in the end the question
whether or not the design of the defendant's chair is
substantially different from that of the plaintiff is to be
answered by consideration of the respective design as a whole:
and apparently, though we do not think it affects our present
decision, viewed as though through the eyes of a consumer or
customer.”

25. In judging the articles solely by the eye the Court must see
whether the defendant's version is an obvious or a fraudulent

25
2012 SCC OnLine Bom 1171 : (2012) 6 Bom CR 178
26
AIR 2017 Bom 162
27
1994 RPC 429
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imitation.”
(Emphasis supplied)

26
Cello Household Products

― 9. I have reproduced these images not for a juxtaposed
comparison myself, but because when the actual bottles and packaging
were placed before me, my question to Counsel on both sides was
"Which is whose?" I should imagine that in an action such as this, that
is more than enough for the grant of interim relief. After all, this
branch of law requires the test to be that of the Court's impression,
presumably on the footing that if a judge cannot tell the difference
then more should not be demanded of the average consumer, he of
average intelligence and imperfect recollection.‖


4
68. Mr. Sibal also relies on paras 37 to 39 of Diageo v. Great Galleon
which read thus:
―37. 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. The test has been
aptly elucidated by this Court in Symphony Ltd. v. Life Plus
28
Appliances , as follows:

―Under the law of designs, it is the settled principle that the
overall look of the product is to be seen and the same is to be
judged with the naked eye. An intricate examination of the
design is not to be done.‖

38. A Co-ordinate Bench of this Court held in Carlsberg
14
Breweries - 2017 , that apart from the overall resemblance in design,
the Court is required to see, as to whether the essential part or the basis
of a plaintiff‘s claim for novelty forms part of the impugned mark, in
the following words:

―153. Thus, to see whether the imitation is obvious, the same
should strike at once on a visual comparison of the article
containing the registered design and the article containing the
design which is said to be infringing the registered design. The
impugned design should be very close to the original design -
the resemblance of the original design being immediately

28
2019 SCC OnLine Del 7511
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apparent to the eye while looking at the two designs.
Fraudulent imitation is one which is deliberately based upon
the registered design. The imitation may be less apparent than
an obvious imitation. There may be subtle distinction between
the registered design and the alleged fraudulent imitation, and
yet the fraudulent imitation although different in some respects
from the original, renders it as a perceptible imitation when the
two designs are closely scanned.‖

xx … xx … xx

―163. In Polar Industries Ltd. (supra) since the design
registration claim by the plaintiff pertained to the entire article
as a whole, namely, a table fan/portable fan, the Court held that
overall view of the registered designs of the plaintiff -
comprising of configuration, shape and ornamentation will
have to be considered for the purpose of comparison. The
component parts of the registered design of the plaintiff could
not be viewed in isolation to determine as to what are its
striking features.‖

39. The Court now proceeds to apply the afore-noted test to
determine if there is prima facie deceptive similarity in the impugned
bottles when compared to the Hipster. While applying this test, the
Court is also conscious that not every resemblance between the two
designs would amount to infringement. The comparison by the eye has
been done by physically holding in hand the Defendant‘s impugned
bottle alongside the Plaintiffs‘. Unequivocally, at first blush, the
Defendant‘s impugned bottles bear a remarkable similarity to the
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,
indeed is nearly-identical and has sufficient similarity to make it
difficult for the consumer to distinguish one from the other. In fact,
even upon undertaking a microscopically detailed examination, or
applying the instructed eye test, only three points of difference
emerge: firstly, the Defendant‘s bottle has a crest-shaped logo of the
Defendant‘s company embossed on the upper portion at the front,
whereas the Hipster is plain. Secondly, the Defendant‘s bottle is a few
millimetres shorter and very slightly more bulbous than the Hipster.
Thirdly, and lastly, the neck of the impugned product is about one
millimetre shorter. However, when examined from a distance of three
to five yards, which is a reasonable distance between a potential
consumer and the shelf of a liquor store where the bottles may be
displayed together, the differences vaporise.25 Besides, the impugned
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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 is, thus, satisfied that Defendant‘s product is deceptively similar
to the Plaintiffs‘ Registered Design.‖
(Emphasis supplied)

69. Adverting to Section 22 of the Designs Act, Mr. Sibal submits that
the principle of infringement, in the Designs Act, unlike that in the
Trademarks Act, does not involve the aspect of recollection. While,
therefore, the test of a person of average intelligence and imperfect
recollection, which is the classic test for trademark infringement, may not
apply in the case of design infringement (in which respect Mr. Sibal parts
ways with the decision of the learned Single Judge of the High Court of
26
Bombay in Cello Household Products ), the eye, even in the case of
design infringement, he submits, has to be that of the average purchaser,
and not the instructed eye.

70. Emphasizing the word ―imitation‖ in Section 22 of the Designs
Act, Mr. Sibal submits that there is a difference between an imitation and
an identical product or a replica. Mr. Sibal submits that the difference
between the expressions ―obvious imitation‖ and ―fraudulent imitation‖
is that, while both involved a deviation from the registered design, the
distinction is one of degree. For this purpose, Mr. Sibal relies on the
following passages from the decision of Ruma Pal, J (as she then was) as
22
a learned Single Judge of the High Court of Calcutta in Castrol :
―20. But all novel designs are not protected Novel designs which
are purely functional cannot found an action for infringement (see: In
29
re : Lamson Industries Ltd.'s Application ,. The object of the
Designs Act is to protect shape but not a functional shape and if shape

29
(1978) RPC 1)
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and configuration are dictated solely by function it is not registrable as
30
a design. The decision in the case of Amp. Inc. v. Utilux Pty. Ltd. :,
of the house of Lords related to the manufacture of electric terminals.

21. Lord Reid J. said:

―… and the words ‗judged solely by the eye‘ must be intended
to exclude cases where a customer might choose an article of
that shape not because he thought that the shape made it more
useful to him.‖

22. The next question is whether there is sufficient resemblance
between the allegedly infringing copy and the petitioner's registered
design to found an action for infringement under section 53 of the Act
It is not every resemblance in respect of the same article which would
be actionable at the instance of the registered proprietor of the design.
The copy must be a fraudulent or obvious imitation. The word
‗imitation‘ dose not mean ‗duplication‘ in the sense that the copy
complained of need not be an exact replica. The word has been
judicially considered but not defined with any degree of certainty. In
31
Best Product Ltd. v. F.W. Woolworth & Company Ltd . (supra) it
was said in deciding the issue of infringement, it was necessary to
break the article down into integers for descriptive purposes but in the
ultimate result it is the article as a totality that must be compared and
contrasted with the features of a shape and configuration shown in the
totality observable from the representation of the design as registered.
It was said that the Court must address its mind as to whether the
design adopted by the defendants was substantially different from the
design which was registered.

*
24. The next task of the Court is to judge the similarity or
difference through the eye alone and where the article in respect of
which the design is applied is itself the object of purchase, through the
27
eye of the purchaser. Thus in the case of Benchairs , where the article
to which registered design ―As we see it, our task is to look at these
two chairs, to observe their similarities and differences, to see them
together and separately, and to bear in mind that in the end the
question whether or not the design of the defendant's chair is
substantially different from that of the plaintiff is to be answered by
consideration of the respective design as a whole: and apparently,
though we do not think it affects our present decision, viewed as
though through the eyes of a consumer or customer.‖


30
1972 RPC 103
31
(1964) IX RPC 215
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25. In judging the articles solely by the eye the Court must see
whether the defendant's version is an obvious or a fraudulent imitation.

32
26 . In Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd . ,
(1931) XLVIII RPC 268 at 279, the meaning of the word ‗obvious‘
and ‗fraudulent‘ have been stated

―… ‗obvious‘ means something which, as soon as you look at
it, strikes one at once as being so like the original design, the
registered design, as to be almost unmistakable. I think an
obvious imitation is something which is very close to the
original design, the resemblance to the original design being
immediately apparent to the eye looking at the two.‖

27. In a later portion of the judgment it was said:

―…fraudulent imitation seems to me to be an imitation which
is based upon, and deliberately based upon, the registered
design and is an imitation which may be less apparent than an
obvious imitation; that is to say, you may have a more subtle
distinction between the registered design and a fraudulent
imitation and yet the fraudulent imitation, although it is
different in some respects from the original, and in respects
which render it not obviously an imitation may yet be an
imitation, imitation perceptible when the two designs are
closely scanned and accordingly an infringement.‖
(Emphasis supplied)


71. The only distinction between an obvious imitation and a fraudulent
imitation, for the purposes of Section 22 of the Designs Act is, therefore,
submits Mr. Sibal, a distinction of degree. In the present case, therefore,
he reiterates, even if the design of the defendant‘s product were not to be
treated as an obvious imitation of the plaintiffs‘ design, it was,
22
nonetheless, a fraudulent imitation thereof. Castrol , submits Mr. Sibal,
was also followed by the Division Bench of the High Court of Bombay in
25
Videocon .


32
(1932) XLVIII RPC 268
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72. Mr. Sibal next relies on the often quoted opening passage from the
judgment of a learned Single Judge of this Court in Marico Ltd. v.
33
Mukesh Kumar which reads thus:

―1. The case at hand illustrates what is well known amongst the
intellectual property rights fraternity, ― The most successful form of
copying is to employ enough points of similarity to confuse the public
with enough points of difference to confuse the courts. Few would be
stupid enough to make exact copies of another's mark or symbol .‖


73. The present case, according to Mr. Sibal, is a classic example of
33
the aphorism cited in para 1 of Marico . The defendant, according to
Mr.Sibal, has introduced, in the design of its flask/bottle, subtle points of
difference, with a view to distinguish the defendant‘s bottle from the suit
design, even while otherwise resorting to clear imitation. Mr. Sibal cites,
in support of his contention, paras 21 and 22 of Cello Household
26
Products , which read thus:
―21. The first test to which Mr. Tulzapurkar invites my attention is
that set out in SJ Kathawalla J's order in Whirlpool of India Ltd. v
34
Videocon Industries Ltd. . The decision covered a range of issues in
the context of rival designs for washing machines. Paragraph 25 of the
decision sets out the tests to be applied in deciding what constitute an
obvious imitation and is actionable as such:

"26. The question of what tests are to be applied in deciding
what constitutes an obvious imitation and/or is actionable is no
longer res integra . This question has been considered in
several judicial pronouncements. The leading decisions on the
point are the decisions in the case of Castrol India Limited v.
22
Tide Water Oil Co.(I) Ltd and Kemp & Co. v. Prima Plastics
35
Limited . In both the decisions, the Kolkata High Court and
the Bombay High Court have laid down the following
propositions as constituting the test to decide whether there is
obvious imitation and/or piracy of a registered design.

33
2018 SCC OnLine Del 10823 : (2018) 253 DLT 8
34
(60) PTC 155 (Bom) : 2015 (1) Bom CR 137
35
1998 SCC OnLine Bom 437
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Castrol India Limited v. Tide Water Oil Co.(I)
22
Limited : ( supra )

(i) The word 'imitation' does not mean
'duplication' in the sense that the copy complained
of need not be an exact replica .

(ii) The Court is required to see in particular as
to whether the essential part or the basis of the
Plaintiff's claim for novelty forms part of the
infringing copy .

(iii) The similarity or difference is to be judged
through the eye alone and where the article in
respect of which the design is applied is itself the
object of purchase, through the eye of the
purchaser .

(iv) The Court must address its mind as to whether
the design adopted by the Defendant was
substantially different from the design which was
registered. The Court ought to consider the rival
designs as a whole to see whether the impugned
design is substantially different from the design
sought to be enforced. (The test laid down on
Benchchairs Ltd. C. Chair Center Ltd. . (1974 RPC
429) was cited with approval).

(v) 'Obvious' means something which, as soon as
one looks at it, strikes one as being so like the original
design/the registered design, as to be almost
unmistakable. Fraudulent imitation is an imitation
which is based upon, and deliberately based upon,
the registered design and is an imitation which may
be less apparent than obvious imitation, that is to
say, one may have a more subtle distinction between
the registered design and a fraudulent imitation and
yet the fraudulent imitation, although it is different in
some respects from the original, and in respects which
render it not obviously an imitation may yet be an
imitation perceptible when the two designs are closely
scanned and accordingly amounts to infringement. (The
test laid down in Dunlop Rubber Co. Ltd. v. Golf Ball
32
Developments Ltd . was cited with approval.

35
Kemp & Co. v. Prima Plastics Limited : ( supra )
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(i) If the visual features of shape, configuration
pattern designs are similar or strikingly similar to
the eye, it is not necessary that the two designs must
be exactly identical and same. The matter must be
looked at as one of substance and essential features
of the designs ought to be considered .

(ii) In a given case, where the registered design is
made up of a pattern which has no one striking
feature in it, but it appeals to the eye as a whole, it
may very well be that another design may be an
imitation of it which makes the same appeal to the
eye notwithstanding that there are many differences
in the details . (The opinion of Farwell J. in Dunlop
32
Rubber Co. Ltd. v. Golf Ball Developments Ltd . (was
cited with approval).

(iii) In comparing rival designs the Court is required
to see whether the impugned design/product is
substantially different to the design which is sought to
be enforced.

The aforesaid tests have been independently applied and/or
followed in a series of judgments of various High Courts,
including judgments in JN Electricals (India) v. M/s.
36
President Electricals (paras 24-25); Alert India v. Naveen
37
Plastics (, para 36); Hindustan Sanitaryware v. Dip Craft
38 19
Industries (para 8), and Dabur India v. Amit Jain & Anr. "

22. The approach is not, as the Court said, in identifying
individual similarities or dissimilarities. These are not
dispositive. The judicial assessment must be on an examination
of the rival products, actually made available if possible. The
products and designs must be seen as a whole, from the
perspective of the common consumer. The test is of visual
appeal, and the task is to see if the essentials of that which
makes it visually appealing have been substantially, but not
necessarily exactly, copied. ‖
(Emphasis supplied)


74. Mr.Sibal would submit that the ―three to five yard test‖ applied by

36
ILR 1980 (1) Del 215
37
1997 (Vol. 17) PTC 15 (Del)
38
(2003) 26 PTC 163 (Del)
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4
the Coordinate Bench in Diageo v. Great Galleon is apt, as three to five
yards is the usual distance between the average purchaser and products
such as those involved in the present case, which are usually kept on
shelves in the store.

75. The case being one of fraudulent imitation, Mr. Sibal would
submit that the Court is required to emphasise similarities over
dissimilarities between the suit design and the impugned design.

76. He has relied, in this context, on para s 77 and 78 of the decision of
this Bench in Pernod Ricard India Pvt. Ltd. v. Frost Falcon Distilleries
39
Ltd. :
―77. When, with this legal position in mind, one views the
defendants ―CASINOS PRIDE‗ label, the manner in which it is
employed, and the manner in which the product is sold, it does appear,
prima facie , that the defendant is seeking to create an association, in
the mind of a customer of its product, with the plaintiff. The
coincidences are just too many. The defendant has used the mark
‗CASINOS PRIDE‘ while, incidentally, the mark of the plaintiff is
‗BLENDERS PRIDE‘. Again incidentally, the mark is used in the
form of white colours on a blue background, similar to the colour
combination in which the plaintiff packages and markets its
―IMPERIAL BLUE‖ whisky. Again, incidentally, the defendant‗s
product also contains a golden dome shaped design, which is present
on the plaintiff‗s label. The shape of the defendant‗s bottle is identical
to that of the plaintiff. Though, viewed individually, these likenesses
may not suffice to justify a conclusion even prima facie of
infringement, by the defendant‗s ‗CASINOS PRIDE‘ marks, as used
by it, infringes the plaintiff‗s ‗BLENDERS PRIDE‘ or IMPERIAL
BLUE‗ marks, the defendant has, as Mr. Hemant Singh correctly puts
it, ingeniously combined features of the ‗BLENDERS PRIDE‘ and
IMPERIAL BLUE‗ marks of the plaintiff to create an overall label and
packaging which, in the mind of a customer of average intelligence
and imperfect recollection, who has earlier in point of time purchased
the plaintiffs ‗BLENDERS PRIDE‘ and ‗IMPERIAL BLUE‗
beverages, and is aware thereof, is perilously likely to invite an

39
2022 SCC OnLine Del 646 : (2022) 90 PTC 1
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inference of association between the defendant‗s product and of the
40
plaintiff. Applying Munday , in view of the apparent dishonest intent
of the defendant, the similarities between the defendant‗s and the
plaintiff‗s labels would have to be accorded precedence over the
dissimilarities. The intent of the defendant, therefore, to pass off its
‗CASINOS PRIDE‘ whisky as that of the plaintiff appears, prima
facie , to be apparent.

78. ― CASINOS PRIDE‖ may not, therefore, infringe
―BLENDERS PRIDE‖ within the meaning of Section 29 of the Trade
Marks Act, inter alia because of the proscription contained in Section
17. The ―CASINOS PRIDE‖ label, even as affixed on the bottle, may
not, similarly, infringe the ―IMPERIAL BLUE‘ marks of the plaintiff,
again for want of imitation of a sufficient number of prominent
essential features. The superimposition of the ―CASINOS PRIDE‖
label on a trade dress which has the possibility of bringing to mind the
plaintiff and its products, however, betokens an apparent intent to
making the unwary customer believe that ―CASINOS PRIDE‖ is
perhaps a cheaper product from the plaintiff‗s brewery. Once such
intent is thus apparent, following the principle enunciated in
41
Slazenger , the Court would presume that the intention of creating, in
the mind of the customer of average intelligence and imperfect
recollection, the impression of an association between the Defendant‗s
product and the plaintiff, or that the ―CASINOS PRIDE‖ whisky is
also manufactured by the plaintiff, is successful.‖


77. The tests enunciated in the afore-extracted passages from Pernod
39
Ricard , according to Mr. Sibal, would apply with equal strength in the
case of design infringement.
78. Mr. Sibal has next sought to highlight the fact that, till the
plaintiffs had introduced the hipsters with the suit design globally in 2018
and in India in May 2019, the defendant was selling its 180 ml whisky in
a bottle of an entirely different shape, as reproduced in para 24 supra.
He submits that, once the plaintiffs‘ hipster design was successful in the
market, the defendant piggybacked on the plaintiff‘s goodwill and

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changed the design of the flask/bottle in which it was selling its product
only in respect of the 180 ml capacity. Mr. Sibal points out that the
defendant‘s product, in all other capacities, continues to be sold using
bottles of the earlier design and that it was only in respect of the bottle
containing 180 ml of whisky that the defendant imitated the plaintiffs‘
design, seeing its success in the market. While the bottles in which the
defendant was packing and selling its whisky were transparent, the new
180 ml impugned packing of the defendant was monochromatic black,
again indicating the intent of the defendant to imitate the plaintiffs‘ suit
design. Apropos the ―curved‖ feature of the defendant‘s bottle, on
which Mr. Lall placed emphasis, Mr. Sibal submits that the defendant
had deliberately limited the curvature to the rear side of the bottle, so
that, as presented to the customer on the shelf, the curvature would not be
33
visible. This, he submits, is a clear example of the Marico principle
which involves duping, simultaneously, the customer and the Court .

79. The malafide intent of the defendant to capitalize on the reputation
that the plaintiffs suit design garnered over a period of time, submits Mr.
Sibal, is also apparent from the defendant electing to call its hipster flask
―Pocket Shot‖ to confuse the customer with ―Pocket Scotch‖ which was
the appellation used by the plaintiffs in respect of its products. Mr. Sibal
clarifies that the plaintiffs are not alleging infringement, by the
defendant, of the mark or word ―Hipster‖.

80. Mr. Sibal draws my attention to para 38 of the plaint, which sets
out the similarities between the suit design and the design of the
defendant‘s bottles/flasks.
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81. In the above context, Mr. Sibal places reliance on para 81 of the
report of the judgment of a learned Single Judge of this Court in Havells
42
India Ltd. v. Panasonic Life Solutions India Pvt. Ltd. , which reads as
under:
― 81. Learned Senior counsel for Defendant No. 1 had sought to
bring out certain dissimilarities by comparing the intersecting golden
lines on the marble pattern of the Plaintiff's fans with the motifs and
colours on the impugned products. In my view, the
differences/dissimilarities that were attempted to be highlighted, are
not sufficient to hold in favour of Defendant No. 1 that there has been
no attempt to copy and misrepresent. It has been held in several
judgments that if the Courts were to examine the dissimilarities with
great minuteness, no Plaintiff would ever succeed in a claim for
infringement or passing off as a clever Defendant, with some skill
would always be in a position to make some cosmetic or minor
changes and get away with deceit and/or infringement.‖

4
He further relied on para 77 of Diageo v. Great Galleon which reads
thus:
―77. Applying the above test, the Court is unconvinced of the
Defendant‘s argument that the Plaintiffs have merely ‗cobbled
together‘ known integers. The element of originality in the aesthetics
and style of the Hipster certainly bears out in the Court‘s prima facie
vision, as discussed above. Defendant has also failed to point out
which particular known designs have been allegedly combined to get
the Plaintiffs Registered Design. The images filed by the 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
burden was on the Defendant to show any one prior art which would
be an exact match to qualify for a prior publication. That said, the
Plaintiffs are free to pick and choose elements and take inspiration
from multiple pre-existing designs, as long as they are able to apply
the same to create a new or original design. Certainly not all designs
can be made avant garde , completely bereft of any inspiration from
existing designs. True novelty lies in the originality of application of
existing ideas in a hitherto unknown fashion. Any rule stricter than this
would amount to stifling human creativity and enterprise, and would
be counter-productive to the intent of novelty and innovation in

42
(2022) 291 DLT 174
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design.‖

82. Mr. Sibal submits that the idea of modelling the flask/bottle in
which to pack and sell 180 ml Scotch whisky on the shape of a
smartphone was entirely conceptualised by the plaintiffs, as was
4
recognized in para 38 supra of the decision in Diageo v. Great Galleon .
In this context, Mr. Sibal also relies on paras 151 and 183 of Carlsberg
14
Breweries which read thus:

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83. Mr. Sibal clarifies that the plaintiffs are not seeking to contend that
the impugned design of the defendant is identical to the suit design. In
this context, apart from para 38 of the plaint, already reproduced in para
43
26 supra, Mr. Sibal relies on para 40(c) and para 42 of the plaint, of
which the latter reads thus:
―42. It is submitted that the Defendant has copied not only the
Plaintiffs' registered design but also the distinctive elements of the
Plaintiffs' overall trade dress and get up. The products of the Plaintiffs
and the Defendant when compared as a whole, it becomes evident that
the Defendant's Infringing Product is identical / deceptively similar in
shape, configuration to Plaintiffs' registered design and dishonest
adoption of overall trade dress and get up of the Plaintiffs' Hipster
Products. The 'look' and 'feel' of the Defendant's Infringing Product are
the same as those of the Plaintiffs' products. The unlawful acts of the

43
see para 59 supra
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Defendant in blatantly copying the Plaintiffs' design and overa11 trade
dress of Plaintiffs' Hipster Products, including the monochromatic
trade dress of the same size, shape and configuration of the bottle /
flask, dilutes the distinctiveness of the Plaintiffs' products and the
design therein, thereby tarnishing the goodwill and reputation attached
with them. Furthermore, it is evident that the Defendant is using a
deceptively similar mark 'Pocket Shot' with respect to identical goods
that would lead to confusion in the minds of consumers.‖


84. Insofar as the reliance, by the defendant, on prior art in the form of
Design No. D562138 is concerned, Mr. Sibal submits that, as the product
had not been presented in a tangible form as required by Section 4 of the
Designs Act, the defendant could not rely thereon. If the actual products
were seen, Mr.Sibal submits that it would become clear that the
impugned design of the defendant was not similar to D562138.

85. The shape of novelty of the suit design, he submits, already stands
adjudicated in the plaintiffs‘ favour by the Coordinate Bench in Diageo
4
v. Great Galleon , and no occasion arises for this Bench to revisit the
said decision. He submits that, in its monochromatic design, the manner
in which the label was affixed on the bottle and the design of the rim of
the cap, the impugned design of the defendant was identical to the suit
design. In support of these submissions, Mr. Sibal has cited paras 30 to
25 26
32 of Videocon , paras 11 and 36 of Cello Household Products , para
44
23 of Gorbatschow Wodka v. John Distilleries Ltd. and paras 51 and
42
59 of Havells India , which read thus:

25
Videocon

44
2011 SCC OnLine Bom 557 : (2011) 47 PTC 100
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―30. Furthermore for maintaining action under passing off it is not
necessary that the person must himself actively carry out the
misrepresentation. It is enough that an instrument of deceit is created
with full knowledge and intention and also no steps are taken to stop
the deceit. The action of passing off can be maintained if the offender
with full knowledge creates a situation where the consumer can be
deceived. Creating opportunities where consumer can be deceived is
enough to sustain action under passing off.

31. In the case at hand, the product is a washing machine. A
washing machine is quite often sold in large shops or in shopping
malls where several models of different brands of washing machines
are kept together. If the consumer is attracted by a particular design of
a washing machine, then he may choose the washing machine with
that design, irrespective of the brand. The distinctive design of the
Whirlpool is not meant to add functionality to the product, but to make
it look more attractive. It is common knowledge that the washing
machine in a store cannot be tested to see as to how it performs. With
several brands manufacturing washing machines, the general basic
level of functionality is expected from the leading brands. What the
design of Whirlpool seeks to do, is to try to make the washing machine
otherwise a piece of machinery, to make it look more artistic and
appeal to aesthetic sense. The design seeks to appeal to the heart rather
than to the head, to use common parlance. Once the consumer likes
such a design, then the choice is made on aesthetic values rather than
solely on functionality. Mr. Kadam therefore is right in contending
that once a consumer is attracted to the design, the consumer can very
well opt for a cheaper and smaller version of the design when it is
placed in the same showroom. The average consumer of washing
machine as depicted by Mr. Tulzapurkar, as being of rational thought,
of certain education and affluence, need not necessarily make a logical
choice based on functionality and brand when decision is to be made
based on aesthetic appeal.

32. Thus Mr. Kadam is right in contending that even though
Videocon may not have actively misrepresented to the consumer, it
has nevertheless knowingly created a tool for deception and thus is
guilty of passing off. According to us, action of passing off is clearly
made out. The design registered by Whirlpool has been a success and
according to them, about three lakh machines have been sold in a short
span. The design registered by Whirlpool is very similar to the
impugned product. The washing machine designed and sold by
Whirlpool has been in market since September, 2010 and have sold
about 3 lakh machines because of its innovative design. No reason is
placed on record as to how the Videocon thought of designing the
washing machine with same distinctive shape in June, 2012. To our
mind it was to take advantage of popularity of the design of Whirlpool
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washing machine.‖

26
Cello Household Products

―11. Slightly different considerations arise when assessing the claim
in passing off. Here, as in any passing off action, a plaintiff must
satisfy all three probanda of the so-called Classical Trinity: (i)
reputation and goodwill in the goods; (ii) misrepresentation by the
Defendants; and (iii) damage. This posits that similarity is
demonstrated to begin with; that done, the question then is not so
much whether it is confusing, but whether it is calculated to deceive.
Passing off is an action in deceit; the deceit lies in the
misrepresentation; and the misrepresentation must be as to source, i.e.,
to deceive the average consumer into believing the defendant's product
is the plaintiff's. There need not be fraud, and intention is irrelevant. It
is well-settled that actual damage does not have to be proved. The
mere likelihood of damage, viz., that damage was reasonably
foreseeable, suffices. Reputation and goodwill are also slightly
different concepts. This has been the subject of some debate in
international cases but this need not detain us today because Cello
claims both reputation and goodwill and does not seek to treat the two
as synonymous. There is some authority for the proposition that there
must be a sale, because without a sale there is no misrepresentation;
and, too, for the proposition, that there must be some prima facie
evidence of misrepresentation, this not being a presumption. That
material can come in different forms, and one of this might be to show
the extent of copying and its exactitude, or to show that elements other
than those in which protection is claimed have also been copied.

*

36. Mr. Tolia is incorrect in saying that an expert view is the only
test of novelty and originality. I believe Mr. Tulzapurkar is justified in
his reliance on the decision of the Court of Appeals in Wright,
Layman & Umney LD v Wright LXVI RPC 149. This was in the
context of passing off and the question was whether there was
anything to clearly distinguish the defendants' product from the
plaintiffs. That should be the determinant. In the present case, I am not
shown anything to support any such distinction.

44
Gorbatschow

―23. The Supreme Court in its judgment in Khoday Distilleries Limited vs.
45
Scotch Whisky Association , emphasized that the class of purchasers who
are likely to buy the goods by their education and intelligence and the degree

45
(2008) 10 SCC 723
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of care which they are likely to exercise in purchasing or using the goods
would be required to be considered. In that context, the Supreme Court relied
on 'the earlier judgment in Cadila Health Care Ltd. vs. Cadila
46
Pharmaceuticals Ltd. ,. The Supreme Court inter alia emphasized that when
the class of buyers is educated and rich, the test is to be applied is different
from one.where the product would be purchased by villagers or by the
illiterate and poor. The Supreme Court held in that case that had the test been
applied,, the matter might have been different and in a given case probably the
Court would not have interfered. The Court was, however, inclined to
interfere because a wrong test had been applied which had led to a wrong
result. In the present case, the Court must undoubtedly place in the balance
the fact that both the plaintiff and the defendant are selling Vodka which has a
distinctive clientele. For the purposes of the application for interlocutory relief
one can well proceed on the basis, as was suggested by the defendant, that the
purchasers of Vodka are primarily educated and well placed in life. But that
by itself is not dispositive of the issue as to whether the conduct of the
defendant does or does not amount to passing off . In the present case, there
are several circumstances, .which must equally be placed in the balance by the
Court. Firstly, the plaintiff has prima facie established both a trans border
reputation as well as a reputation in the market in India and the fact that the
unique shape of the bottle is an important element in tracing the source of
origin of the product to the plaintiff ; Secondly , under the Trade Marks Act,
1999, the shape of goods and their packaging is statutorily recognized as a
constituent element of a trade mark as distinguishing the goods or services of
a person with those of others; Thirdly, the submission of the plaintiff that no
other manufacturer either globally or in India has adopted the shape of the
bottle of the plaintiff (save and except for the defendant) has not been
disputed in the course of submissions by counsel for the defendant; Fourthly
the shape which has been adopted by the plaintiff is unique to the point of
being capricious. The defendant has absolutely no plausible or bona fide
explanation for adopting a shape which is strikingly similar; Even though the
ad interim order of the Court permitted the defendant to sell Vodka, though in
a ‗distinct shaped bottle‘ the defendant has chosen not to do so. The defendant
has no explanation of how this particular design was adopted; and Fifthly, the
attempt of the defendant if it is allowed would result in diluting the
distinctiveness and exclusivity of the mark of the plaintiff which has as an
essential ingredient, the distinctive shape of the bottle in which Vodka is sold.
This would only embolden other infringers to invade upon the proprietary
right of the plaintiff and would ultimately result in a destruction of the
goodwill associated with the mark of the plaintiff.‖

86. Thus, submits Mr. Sibal, apart from the fact that the present case is
4
fully covered by the decision in Diageo v. Great Galleon , the plaintiffs

46
(2001) 5 SCC 73
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are entitled, on the basis the material on record and the law that applies,
to ad-interim interlocutory injunction as was granted in that case .

Mr. Lall‘s submissions by way of rejoinder

87. Mr. Lall, in rejoinder, commences by seriously contesting Mr.
Sibal‘s submission that different tests apply while examining the aspect
of validity of the suit design on the ground of novelty and the aspect of
infringement. He submits that the contention is, ex facie , illogical, apart
from being incorrect in law. He drew my attention, initially, to the
following passage from the decision of the Division Bench of this Court
47
in Kamdhenu Limited v. Aashiana Rolling Mills Ltd
―33. The question of 'eye appeal' has been considered in a multitude
15
of judgments. In Gaskell & Chambers Ltd. v. Measure Master
learned Judge observed that "the decision whether the registered
design and the designs of the alleged infringements are substantially
different is for the court and cannot be delegated to the opinions of the
witnesses. It must be decided on a comparison of the features which
appeal to, and are judged by, the eye. To do this, the Court must adopt
the mantle of a customer who is interested in the design of the articles
in question as it is the eye of such an interested person, the interested
addressee, which is relevant.‖

88. Mr. Lall points out that the plaintiffs obtained registration, in
respect of the suit design, only because of its novel features, which
purportedly distinguishes the suit design from prior art. The basis of the
registration of the plaintiffs being the said novelty, Mr. Lall submits that
the monopoly conferred on the plaintiffs as a result of such registration
has also, therefore, to be coextensive with the said novelty and
originality. The sweep of inquiry while examining the aspect of

47
2022 SCC OnLine Del 2364
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infringement, cannot, submits Mr. Lall, be greater than the monopoly
granted by the design registration. Having obtained registration in
respect of the design by citing points of novelty, the plaintiffs wanted the
infringement analysis, qua the design of the defendant‘s bottle, to be on
the basis of the entire article, beyond the points of novelty and originality
resident therein. Such an approach, submits Mr. Lall, defies logic.

89. The issue of the perspective from which the aspect of infringement
is to be examined, he submits, stands covered in the opening sentence of
7
para 10 of the report in B. Chawla , which for the sake of ready reference
may once again be reproduced thus:

8
―10. In Phillips v. Harbro , Lord Moulton observed that while
question of the meaning of a design and of the fact of its infringement
are matters to be Judged by the eye, (sic) it is necessary with regard to
the question of infringement , and still more with regard to the question
of novelty or originality, that the eye should be that of an instructed
person, i.e., that he should know what was common trade knowledge
and usage in the class of articles to which the design applies ....‖
(Emphasis supplied)

90. The interested eye, submits Mr. Lall, possesses trade knowledge as
well as awareness of prior art. It recognizes the inventive step, which
confers on the design novelty and originality. Incorporation, in the
design, of usual trade variants would not confer, on the design, novelty
and originality vis-à-vis prior art. For this purpose, Mr. Lall draws
attention once again to para 11 of the report in B. Chawla, which reads
thus:
―11. The quintessence of the placitums above is that distinction has
to be drawn between usual trade variants on one hand and novelty or
originality on the other. For drawing such distinction reliance has to
be placed on popular impression for which the eye would be the
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ultimate arbiter. However, the eye should be an instructed eye,
capable of seeing through to discern whether it is common trade
knowledge or a novelty so striking and substantial as to merit
registration. A balance has to be struck so that novelty and originality
may receive the statutory recognition and interest of trade and right of
those engaged therein to share common knowledge be also protected.‖
(Emphasis supplied)

91. Contradistinguishing Section 22 of the Designs Act with Section
29 of the Trade Marks Act, Mr. Lall points that, whereas Section 29 of
the Trade Marks Act is predicated on considerations of confusion and
deception, Section 22 operates on the principle of obvious imitation and
fraudulent imitation. The very concept of obviousness, he submits,
presupposes that the eye is instructed. Where the eye is less instructed,
the possibility of confusion is greater. The difference between ―obvious‖
and ―fraudulent‖ imitation, he submits, is that fraudulent imitation would
involve an element of mens rea . Once again drawing attention to para 10
7
of B. Chawla , Mr. Lall also emphasizes para 9 of the same decision,
which reads thus:
―9. Similar view was expressed by Buckley L.J. on the question of
48
quantum of novelty in Simmons v. Mathieson and Cold , at 494 in
these words:

"In order to render valid, the registration of a Design under the
Patents and Designs Act, 1907, there must be novelty and
originality, it must be a new or original design. To my mind,
that means that there must be a mental conception expressed in
a physical form which has not existed before, but has
originated in the constructive brain of its proprietor and that
must not be in a trivial or infinitesimal degree, but in some
substantial degree".‖


92. Mr. Lall also places reliance, in the above context, on the
48
following passage from Simmons v. Mathieson & Co. Ltd. :

48
(1911) 28 RPC 486
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―This case has been very clearly and very ably argued by Mr.
Simmons and I have listened with all attention to everything he had to
say. He said:—"I have registered a Design under the Act which is
shown in the representation annexed to the registration and that, it is
quite true, is the real test. He has not registered a Design merely for the
curve of the panels or for the shape of the panels on the side view; he
has registered, in the words of the registration, a Design for the shape
and pattern of the body of a children's carriage as shown in the
representation; that is, the thing as a whole, not merely, as I said just
now, applied to the panels or the curves at the bottom of the panels.
Looking, as I have in the course of the argument, at the numerous
illustrations before us, more particularly I think at the one of a landau,
I have come clearly in my own mind to the opinion that this Design is
not new and original in the sense which the Act of Parliament intended
when it authorised the registration of a new and original Design. But
assuming in favour of the Plaintiff that it was, it was clearly a
registration for the shape and pattern of the body as shown in the
representation. If the registration was valid at all, it must be taken in
an extremely narrow and definite way, and it would not be an
infringement unless the totality of the Design, as registered, has been
infringed; it is no infringement of a registered Design to take a part
out of that registered Design and with an addition to make the total
not identical with the registered Design. I have before me the
registered Design, and I have also before me the Design of the
Defendants. Looking merely at the picture, not taking any side or other
view or anything of that kind, but looking simply at the Design as
represented in the picture, I see that there is a side and also "C" springs
which are not claimed by Mr. Simmons in any shape or way; I see a
representation of panels with a curve below, and I also see that on the
right hand, the narrow end of the perambulator, there is a flat end
piece, quite plainly shown on the Drawing, which is just as much part
of the shape and pattern of the body as are the side panels with the
curve below. I look at the Defendants' Design and I see that although
there is, I agree, a general similarity but not identity of the panels and
of the curve below, there is an absolute and entire difference in the
Design of the end piece which is curved and not straight. That
distinction alone, it seems to me in a case like this, where one must
look so narrowly at the registration, is amply sufficient to prevent the
Plaintiff from succeeding and saying—"My claim is good and the
Defendants' is an infringement of my 'registered Design," ‖

(Emphasis supplied)

93. That the aspect of infringement has to be assessed by applying the
test of the instructed eye, submits Mr. Lall, is also apparent from Section
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22 of the Designs Act, which permits all grounds on which cancellation
of a registered design may be sought under Section 19 to be pleaded as
defences to an infringement action. The grounds on which cancellation
of a registered design can be sought under Section 19, points out Mr.
Lall, presuppose knowledge, by the challenger, of prior art.

94. As such, this, too, he submits, indicates that Section 22 has to be
viewed from the perspective of an instructed eye, and not from that an
average consumer who is unaware of earlier designs or the state of prior
art.

49
95. In this context, Mr. Lall also relies on Section 4(c) of the Designs
Act, which proscribes registration of any design which ―is not
significantly distinguishable from known designs or combinations of
known designs‖. What is registered by a design registration, therefore, is
a new and original design. The fact that an identical design has been
registered prior in point of time is, therefore, an absolute ground on
which cancellation of a registered design can be sought. Mr. Lall refers
to, in this context, para 3 of the judgment of the Division Bench of this
50

Court in Reckitt Benckiser (India) Ltd v. Wyeth Limited which
identified the issues arising for determination, in that case, thus:
―3 . The learned Single Judge framed the following questions for
determination:

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―1. Whether the design registration in UK, USA or Australia
could amount to prior publication or disclosure to public as
contemplated in Section 4(b) of the said Act?

2. Whether there is material on record to indicate, prima facie ,
that the plaintiff's design had been published in India or in any other
country prior to the date of registration, i.e. , 5.12.2003?

3. Can it be said, prima facie , as to whether the design of the
defendant's spatula is a fraudulent or obvious imitation of the
plaintiff's registered design as applied on its spatula?‖


96. Having thus drawn my attention to para 3, Mr. Lall proceeds to
rely on paras 28 and 29 of the report, which read as under:
―28. A reading of the decision of the Division Bench of this Court in
19
the case of Amit Jain (supra) shows that there is no discussion in the
same with respect to inter play and inter-relation between Sections
4(b), Sub-sections (1)(a) and (1)(b) of Section 19 and Sub-sections (1)
and (2) of Section 44 nor is this inter play of the said sections found in
the judgment of learned Single Judge of the Calcutta High Court in the
case of Gopal Glass Works Ltd. v. Assistant Controller of Patents &
51
Designs (supra), the ratio of which has been accepted by the Division
19
Bench in the case of Amit Jain . (supra).

19
29 . The only discussion found in this aspect in Amit Jain (supra)
is in paras 24 to 26 which read as under:

24. Counsel for the Respondent-Defendant submitted that
the very design in respect of which the registration has been
granted in favour of the Plaintiff is already in the public
domain and has been published earlier. The Respondents have
relied upon the Design Registration Nos. 319582 and 263373
issued by the US Patent Office to contend that there is no
novelty as far as the Plaintiff's designs are concerned. In the
first place it must be noticed that the reliance upon a design
registered in the US cannot satisfy the requirements of Section
19 of the present Act which specifies the ground on which
cancellation can be granted. Section 19 reads as under—

‗19. Cancellation of registration —(1) Any person
interested may present a petition for the cancellation of
the registration of a design at any time after the
registration of the design, to the Controller on any of

51
2005 SCC OnLine Cal 430 : (2006) 33 PTC 434 (Cal)
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the following grounds, namely—

(a) that it has been previously registered in
India;

(b) that it has been published in India or in
any other country prior to the date of
registration.‘

25. We find that the Calcutta High Court has in Gopal
51
Glass Works Ltd. , explained the position, with which we
concur, as under—

‗39. The next question in issue before this Court is
whether the finding of the Respondent No. 1 that the
document downloaded from the internet from the
website of the Patent Office of the United Kingdom
might be taken as prior publication of the impugned
design, is legally sustainable.

40. It is true that publication has not been defined in
the 2000 Act. Yet for reasons discussed above, mere
publication of design specifications, drawings and/or
demonstrations by the Patent Office of the United
Kingdom, or for that matter, any other foreign country,
in connection with an application for registration,
would not, in itself, amount to publication that would
render a design registered in India liable to
cancellation.‘

26. The mere fact that there may have been a registration in
the U.S. in respect of similar bottles and caps cannot come in
the way of the Plaintiffs seeking an order restraining the
Respondent from infringing its registered design.‖

Mr. Lall submits that, therefore, there is a distinction between the
tangible form of the designs and their physical forms. What is to be
compared is the registration of the plaintiffs vis-à-vis the product of the
defendant, a tangible form of which must be available for comparison. In
this context, Mr. Lall also relies on the following passage from Rosedale
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52
Associated Manufacturers Ld. v. Airfix Products Ld :
―I am, however, persuaded that this conclusion is unsound, bearing in
mind that the design is to be judged by the eye and the language of
8
Lord Moulton in Phillips v. Harbro (1920) 37 R.P.C. 233, at p. 239.
The test to be applied was there stated as follows: ―But, while
questions of the meaning of a design and of the fact of its infringement
are matters to be judged of by the eye, it is necessary with regard to the
question of infringement, and still more with regard to the question of
novelty or originality, that the eye should be that of an instructed
person, i.e., that he should know what was common trade knowledge
and usage in the class of articles to which the design applies. The
introduction of ordinary trade variants into an old design cannot make
it new or original.‖ ‖

53
97. Mr. Lall, thereafter, adverted to para 39 of the decision in Diageo
4
v. Great Galleon . Mr. Lall submits that, in para 39 of the decision in
4
Diageo v. Great Galleon , the coordinate Bench has held that though the
defendants, in that case, could not be said to be passing off their products
as those of the plaintiff, a case of infringement was, nonetheless, made
out because of similarity in the shape between the plaintiff‘s and the
defendants‘ bottles. This approach, submits Mr. Lall, is fundamentally
erroneous, as what is to be compared is the plaintiffs‘ design vis-à-vis the
defendant‘s bottle, and not the plaintiffs‘ bottle vis-à-vis the defendant‘s
bottle. That apart, Mr. Lall submits that, as the case is one of design
infringement, the labels of the bottles have no relevance. In this context,
22
Mr. Lall also relies on para 38 of the report in Castrol India , which
reads thus:
―38. The test of deceptive similarity would be appropriate where the
petitioner pleads passing off. But in cases of infringement of design
the question is not whether the similarity has or is likely to cause
confusion or deception of a purchaser but whether the similarity is an
imitation of the registered design sufficient to destroy the exclusive
right of user of the proprietor despite the fact that no confusion is or

52
1957 RPC 239 (CA)
53
Refer Para 68 supra
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may be caused as to the source of the goods. Otherwise every
registered design could be imitated with impunity merely by changing
the colour of the two products thus obviating any confusion. In my
view the respondents have so imitated the petitioner's design as to
deprive the petitioner of the protection under the Statute.‖

98. Copying, submits Mr. Lall, is not proscribed by the law.
Legitimate copying does not lead to any breach of intellectual property
rights. Mr. Lall has, in this context, referred to McCarthy on Trademarks
and Unfair Competition, (Fourth Edition), specifically the following
passages therein:
―Copying of non-IP Protected Concepts is Fair Competition. In
the absence of legally defined exclusive rights, imitation and copying
is permitted, and in fact, encouraged, as an essential element of free
competition:

Imitation is the life blood of competition. It is the unimpeded
availability of substantially equivalent units that permits the normal
operation of supply and demand to yield the fair price society must pay
for a given commodity.

The public interest in competition outweighs any interest in
granting a reward for ingenuity in making a product attractive, unless a
competitor who copies these attractive features transgresses the law—
for example, by confusing customers as to the source of goods. In
affirming the principle of free copying, the Fifth Circuit stated:

Outright copying is often a civilizing rather than a
cannibalizing folkway. The world would be a duller place without the
originators, but it would not work without the copyists.

Legitimate Copying is an Essential Part of a Competitive
Economy . Much of the discussion in legal briefs, articles and judicial
opinions is phrased in terms of whether or not an accused imitator has
transgressed upon a valid exclusive right of intellectual property.
"Copying" is sometimes denigrated as being somehow inherently
immoral, unfair and illegal. The popular folklore is that a "copycat" is
a pirate and that all commercial copying and imitation must be an
illegal form of competition. That is not so. In fact, legitimate copying
is a large part of what makes a free market economy work.

The Supreme Court has emphasized that free and legal copying
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is an essential element of free competition: In many instances there is
no prohibition against copying goods and products. In general, unless
an intellectual property right such as a patent or copyright protects an
item, it will be subject to copying …. Copying is not always
discouraged or disfavoured by the laws which preserve our
competitive economy … Allowing competitors to copy will have
salutary effects in many instances.

The successful competitor offers an identical or equivalent
product at a lower price or with greater quality. It is important to
emphasize that there is absolutely nothing legally or morally
reprehensible about exact copying of things in the public domain.



Trade Dress Rights in Product Shape. The principle of free
copying is especially significant when a competitor claims exclusive
rights in a product shape by invoking the rules of trade dress law. In
such a case, the hovering presence of the patent laws counsels a strict
adherence to the requirements of trade dress validity and infringement,
lest a ―back door‖ patent be granted under the guise of trade dress law:

Copying is not only good, it is a federal right-a necessary
complement to the patent system‘s grant of limited monopolies ….
Effective competition and the penumbra of the patent laws require that
competitors be able to slavishly copy the design of a successful
product.
Business people will sometimes think that it is ―unfair
competition‖ for a competitor to copy a product design, even if it is not
protected by some form of intellectual property. They erroneously
equate competition by copying with ―unfair‖ conduct. As Judge
Easterbrook observed: Businesses often think competition unfair, but
federal law encourages wholesale copying, the better to drive down
prices. Consumers rather than producers are the objects of the law‘s
solicitude.‖


99. On the aspect of passing off, Mr. Lall has invited my attention to
4
paras 95, 96 and 98 of the decision in Diageo v. Great Galleon , which
read thus:
―95. In light of the foregoing discussion, the Court now proceeds to
make a comparison of the trade-dress of the products in question.
Immediately, it is noticed that the Hipster is marketed in three colour
variants: white, golden and black. The Defendant‘s bottles are in the
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colour variants red and black. Whilst all the bottles are in a dual-
chromatic scheme, there is indeed some grain of truth in the
Defendant‘s submission that the black-and-gold combination is
common to trade, and has been used by a plethora of alcohol
manufacturers. Mr. Lall had produced various such trade dresses,
which are extracted below:

‖

96. Similarly, a two-toned rimmed and rounded cap, too, has been
widely used in the said industry and is not unique to the Plaintiffs.
Hence, upon a comparison of the trade dress as a whole, the Court
cannot prima facie agree 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 is not entirely convinced that the same is
being imitated by the Defendant to deceive unwary customers. The
Court is further prima facie unconvinced that the purported imitation
of the Hipster‘s trade dress by the Defendant has resulted in some
tangible confusion with regard to the origin or source of the goods,
considering 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.

*

98. Before moving on, clarification on one aspect is necessary, lest
it might lead to confusion. While examining the issue of passing off,
the Court has not borne in mind the design similarities, for which the
Defendant is found to be at fault as discussed above. This claim of the
Plaintiff is analysed squarely on the aspect of passing off of the trade
dress, overall get-up, and presentation of the product through
packaging. Even on the above noted aspect, there are undeniably some
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similarities which are quite visible, but they are largely occurring
because of identical designs (for which the plaintiff is entitled to
injunction on account of design infringement) and the mono-
chromactic colour of the bottles. However, at this interim stage, such
similarities are not sufficient to grant injunction on a passing off
action, particularly when the trinity test, recounted above is not met.‖


100. The defendant cannot, therefore, submits Mr. Lall, be alleged of
having committed of any fraud, as several distinguishing elements
existed to differentiate the design of the defendant‘s bottle vis-à-vis the
suit design.

101. Adverting, next, to the judgment of a coordinate Bench of this
14
Court in Carlsberg Breweries , Mr. Lall, even while acknowledging the
fact that in para 151 of the report in the said case, this Court had referred
27
to the decision of the House of Lord in Benchairs , which referred to the
eyes of the consumer or customer, points out that the same judgement, in
8
paras 161 and 162, follows the judgements in Phillip v.Harbro and
15
Gaskell & Chambers , both of which affirm the ―instructed eye‖
principle. Paras 176 and 177 of the same decision, points out Mr. Lall,
again reiterate the ―instructed eye‖ principle. The said paragraphs read
as under:
―176. The next question that arises for consideration is that even if
the plaintiff's design registration is presumed to be valid, i.e. that the
indentations/grooves found on the plaintiff's beer bottle are presumed
to be not only novel, but also appealing to the eye and at the same
time, as not being functional, whether the defendant's bottle design
prima-facie infringes the plaintiff's registered design.

177. Once again, I, prima-facie, find that the plaintiff has not been
able to make out a case of design infringement. When one compares
the beer bottle of the plaintiff as a whole with the beer bottle of the
defendant - as a whole, they both appear to be like any other ordinary
beer and other beverage bottles available in the market. The defendant
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has placed on record photographs of several other beer and other
beverages brands having similar shapes of bottles, such as Bud Weiser,
Staropramel, Podkovan, Ursus, Glenfiddseh, Goldur, Praha, etc. It
needs consideration whether the indentations/grooves in the plaintiff's
bottle design, and those found in the defendant's bottle, when
compared, lead to the prima-facie conclusion that the defendant's
indentations/grooves are a fraudulent and obvious imitation of the
plaintiff's bottle design. The two bottles when viewed from different
angles, by placing them side by side appear as follows:‖


102. On the aspect of balance of convenience, Mr. Lall again
4
emphasizes the fact that, even in Diageo v. Great Galleon , it was
positively found that the defendant in that case could not be said to have
passed off its products as that of the plaintiff, as there was no likelihood
of confusion between them. In the present case, he submits, likelihood of
confusion, if at all, would be even less, in view of the obvious differences
between the defendant‘s bottle and the plaintiffs‘ registered design. In
such a situation, he submits that, even on the principle of balance of
convenience, no interlocutory injunction against the defendant would be
justified.

103. Mr. Lall, in conclusion, submits, relying on the judgment of a
coordinate Bench of this Court in R.B. Health (US) LLC v. Dabur India
54
Ltd , that the defendant was only required to show the existence of a
credible challenge to the suit design. That, he submits, the defendant has
certainly shown in the present case.

Mr. Sibal‘s submissions by way of sur-rejoinder


54
(2020) 84 PTC 492 (Del)
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7
104. First addressing para 10 of the report in B. Chawla , Mr. Sibal
7
submits that the opening paragraph of B. Chawla made it clear that the
dispute in that case did not involve any issue of infringement. Para 10 of
7
B. Chawla , he submits, had to be understood in the light of the question
7
involved in that case. Holistically read, the decision in B. Chawla , as
47
also the decision in Kamdhenu , submits Mr. Sibal, dealt with the aspect
of novelty and not with that of infringement. Mr. Sibal submits that Mr.
Lall has, without justification, sought to liken the concepts of patent
infringement and design infringement. Unlike patent infringement, he
submits that, in the case of design infringement, there is no ―person
skilled in the art‖ or ―person ordinarily skilled in the art‖. The consumer
or customer, from whose perspective the aspect of infringement has to be
examined, points out Mr. Sibal, is not skilled in the art. He is a mere
average customer, who sees the two products on a shelf, and the test is
whether, on the aspect of design, the customer is able to differentiate
between the two or whether the design of the defendant would, viewed
thus, be liable to be regarded as an imitation of the design of the
plaintiffs.

105. Like Mr. Lall, Mr. Sibal also relies on Section 22(3) of the Designs
Act. Where Mr. Lall sought to rely on the said provision in conjunction
with Section 20, to submit that the grounds of defense available to an
action for piracy were grounds which presupposed the defendant to be a
person who was instructed and aware of prior art, Mr. Sibal relies on
Section 22(3) to contend that awareness of prior art was only envisaged
in Section 22(3) as a defence to an action for piracy and was not a
definitive test for piracy itself, under Section 22(1). Mr. Sibal
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emphasizes the use of expression ―for the purpose of sale‖, as contained
in sub-sections (1) and (2) of Section 22 as indicative of the fact that sale,
or availability for sale, of the defendant‘s goods, was a precondition for
piracy to exist. As the aspect of piracy had to be examined in connection
with sale of the allegedly offending goods, Mr. Sibal submits that, by
necessity, the test had to be one of the average purchaser. The test of the
instructed eye, Mr. Sibal submits, applies only to the defence to a charge
of piracy under Section 22(3) read with Section 19(1)(c) of the Designs
Act.

106. The aspect of mens rea , submits Mr. Sibal, is inbuilt into the
concept of ―imitation‖. Design piracy, points out Mr. Sibal, would exist
only where there was either obvious or fraudulent imitation. Innocent
imitation, submits Mr. Sibal, is an oxymoron. Imitation, by its very
nature, presupposes an intent to imitate. As such, the aspect of mens rea
is already inbuilt in Section 22(1) of the Designs Act.

107. Apropos, the difference between an ―obvious imitation‖ and a
―fraudulent imitation‖, Mr. Sibal once again relies upon paras 26 and 27
22
of Castrol , which read thus:
32
―26. In Dunlop Rubber Co. Ltd. v. Golf Ball Developments Ltd ,
(1931) XLVIII RPC 268 at 279, the meaning of the word ‗obvious‘
and ‗fraudulent‘ have been stated ―… ‗obvious‘ means something
which, as soon as you look at it, strikes one at once as being so like the
original design, the registered design, as to be almost unmistakable. I
think an obvious imitation is something which is very close to the
original design, the resemblance to the original design being
immediately apparent to the eye looking at the two.‖

27. In a later portion of the judgment it was said: ―…fraudulent
imitation seems to me to be an imitation which is based upon, and
deliberately based upon, the registered design and is an imitation
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which may be less apparent than an obvious imitation; that is to say,
you may have a more subtle distinction between the registered design
and a fraudulent imitation and yet the fraudulent imitation, although it
is different in some respects from the original, and in respects which
render it not obviously an imitation may yet be an imitation, imitation
perceptible when the two designs are closely scanned and accordingly
an infringement.‖

108. The Court was, therefore, submits Mr. Sibal, required to
concentrate on similarities, rather than dissimilarities, between the design
of the plaintiffs and the product of the defendant.

109. Mr. Sibal also relies on the following passage from the decision of
the Full Bench of this Court in Carlsberg Breweries v. Som Distilleries
55
and Breweries Limited :
―It bears note that the words ―fraudulent or obvious imitation‖ which
are found in Section 22 of the Designs Act, have their flavor similar to
the words identity/identical or deceptively similar as are found in
Section 29 of the Trade Marks Act.‖


110. Apropos McCarthy, Mr. Sibal submits that he has no cavil with the
proposition that legitimate copying is permissible. However, he submits
that copying, in a manner which would infringe intellectual property,
cannot be allowed.

111. The fact that the suit design was inspired by the design of a
smartphone, submits Mr. Sibal, also stands recognized by the decision in
4
Diageo v. Great Galleon . He also relies, in the said context, on material
available on the internet web page at
https://www.lovecreative.com/work/pocket-scotch , wherein the plaintiff

55
2018 SCC OnLine Del 12912
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held out thus:
―When Diageo enlisted us to explore smaller formats for Scotch, we
saw that smartphone culture could be the future of an embattled
category.‖

112. A similar declaration, points out Mr. Sibal, is to be found in the
very next page of the same website, in which the plaintiff decalres:
―We created Pocket Scotch. A portable whisky format inspired by the
shape and proportions of a smartphone, ready for any occasion.‖


113. Responding to Mr. Lall‘s submission that, in para 160, the
14
judgment of the coordinate Bench of this Court in Carlsberg approved
the ―instructed eye‖ test, Mr. Sibal submits that para 160 cannot be read
in isolation and has to be seen in conjunction with paras 177 to 182 of the
22
same decision, which cites Castrol with approval. Further, in the
infringement analysis in the said decision, contained in paras 171 to 182
22
thereof, Mr. Sibal points out that the only decision cited was Castrol .

114. Mr. Sibal next addresses Mr. Lall‘s contention that infringement
analysis has to be on design-to-design, and not design-to-product basis.
He submits that this issue stands answered by a juxtaposed reading of the
definition of ―design‖ in Section 2(d) with the definition of ―article‖ in
Section 2(a) of the Designs Act.

22
115. In conclusion, Mr. Sibal cites paras 17 and 25 of Castrol , and
25
para 24 of Videocon and paras 9, 18, 20 and 22 of Cello Household
26
Products , which read thus:
22
Castrol

―17. The difference in the petitioner's containers and the containers of the
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other concerns including the petitioner is primarily in the proportions of the
rectangle and secondarily in the colours used. But broadly speaking there can
be no doubt that the design of the respondent's container bears a ‗family
31
resemblance‘ to the petitioner's design (see: Best Products ). There can also
be no doubt that the design used by the respondent in respect of the very class
of goods in respect of which the petitioner's design is registered.

*

25. In judging the articles solely by the eye the Court must see whether the
defendant's version is an obvious or a fraudulent imitation.‖


25
Videocon

―24. The next task of the Court is to judge the similarity or difference through
the eye alone and where the article in respect of which the design is applied is
itself the object of purchase, through the eye of the purchaser. Thus in the case
31
of Best Products where the article to which registered design was applied
was a chair. Russel L.J. said:
As we see it, our task is to look at these two chairs, to observe their
similarities and differences, to see them together and separately, and to
bear in mind that in the end the question whether or not the design of
the defendant's chair is substantially different from that of the plaintiff
is to be answered by consideration of the respective design as a whole:
and apparently, though we do not think it affects our present decision,
viewed as though through the eyes of a consumer or customer.‖

26
Cello Household Products

―9. I have reproduced these images not for a juxtaposed
comparison myself, but because when the actual bottles and packaging
were placed before me, my question to Counsel on both sides was
"Which is whose?" I should imagine that in an action such as this, that
is more than enough for the grant of interim relief. After all, this
branch of law requires the test to be that of the Court's impression,
presumably on the footing that if a judge cannot tell the difference then
more should not be demanded of the average consumer, he of average
intelligence and imperfect recollection.

*
18. The difficulty in accepting any of this is graphically
demonstrated at page 132 of the Notice of Motion paper book where
Modware's KUDOZ bottle is set next to its own Kool Kruiser bottle.
The two are entirely different products. The Kool Kruiser is nothing at
all like Cello's PURO; but Modware's KUDOZ bottle is almost exactly
Cello's PURO bottle. That is the totality of the case before me.
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*

20. I find no explanation for Modware taking not only this
registered design but its identical - or, at any rate, an extremely and
certainly deceptively similar – packaging and the same two-tone
colour combinations. These are all issues that will have to be
considered in the context of the settled law on the subject. There is no
manner of doubt in my mind that on all three aspects, i.e., shape,
configuration and ornamentation, the Modware KUDOZ product is
wholly indistinguishable from Cello's PURO bottle.

*

22. The approach is not, as the Court said, in identifying individual
similarities or dissimilarities. These are not dispositive. The judicial
assessment must be on an examination of the rival products, actually
made available if possible. The products and designs must be seen as a
whole, from the perspective of the common consumer. The test is of
visual appeal, and the task is to see if the essentials of that which
makes it visually appealing have been substantially, but not necessarily
exactly, copied.‖

Analysis

116. One may commence the analysis of the issues that arise, and the
merits of the rival contentions advanced, by examining, in the first
instance, the effect of the decision of the coordinate bench in Diageo v.
4
Great Galleon .

4
117. Diageo v. Great Galleon is an interlocutory order disposing of an
application under Order XXXIX Rules 1 and 2 of the CPC – as is this.
Para 99 of the decision, as reported in SCC OnLine, reads thus:
―Needless to say, the observations made hereinabove are on a prima
facie basis, for the purpose of deciding the interim applications.‖


118. The value of such an order as a precedent, even in later cases based
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on similar facts, stands delineated in para 59 of the majority decision in
56
Empire Industries Ltd v. U.O.I. (though Varadarajan, J. entered a
dissent):
―59. Good deal of arguments were canvassed before us for variation
or vacation of the interim orders passed in these cases. Different courts
sometimes pass different interim orders as the courts think fit. It is a
matter of common knowledge that the interim orders passed by
particular courts on certain considerations are not precedents for
other cases which may be on similar facts. An argument is being built
up nowadays that once an interim order has been passed by this Court
on certain factors specially in fiscal matters, in subsequent matters on
more or less similar facts, there should not be a different order passed
nor should there be any variation with that kind of interim order
passed. It is submitted at the Bar that such variance creates
discrimination. This is an unfortunate approach. Every Bench hearing
a matter on the facts and circumstances of each case should have the
right to grant interim orders on such terms as it considers fit and
proper and if it had granted interim order at one stage, it should have
the right to vary or alter such interim orders. We venture to suggest,
however, that a consensus should be developed in the matter of interim
orders.‖
(Emphasis supplied)

57
119. In a short order in Vishnu Traders v. State of Haryana ,
however, the Supreme Court entered this note of caution:
―3. In the matters of interlocutory orders, principle of binding
precedents cannot be said to apply. However, the need for consistency
of approach and uniformity in the exercise of judicial discretion
respecting similar causes and the desirability to eliminate occasions for
grievances of discriminatory treatment requires that all similar matters
should receive similar treatment except where factual differences
require a different treatment so that there is assurance of consistency,
uniformity, predictability and certainty of judicial approach.‖

120. On the considerations to be borne in mind while passing
interlocutory injunctive orders, the Supreme Court postulated the
following broad principles in Colgate Palmolive (India) Ltd v.

56
(1985) 3 SCC 314
57
1995 Supp (1) SCC 461
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58
Hindustan Lever Ltd :

―24. We, however, think it fit to note herein below certain specific
considerations in the matter of grant of interlocutory injunction, the
basic being non-expression of opinion as to the merits of the matter by
the court, since the issue of grant of injunction, usually, is at the
earliest possible stage so far as the time-frame is concerned. The other
considerations which ought to weigh with the court hearing the
application or petition for the grant of injunctions are as below:

58
(1999) 7 SCC 1
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indicator to the basic considerations which have to guide the Court while
passing orders of interlocutory injunctions. Most prominently, they
indicate that observations on the merits of the dispute, contained in an
order of interlocutory injunction are merely tentative or prima facie in
nature.

121. While, therefore, interlocutory injunctive orders, even in
intellectual property matters, are not binding precedents, if the facts and
issues are identical, Courts should strive to maintain uniformity of
approach so that, even at the interlocutory stage, contrasting orders are
not passed in identical facts. The need for uniformity is, in such cases,
however, guided by the principle of fostering the faith of the litigant,
rather than the principle of comity of Courts or judicial discipline.
Erosion of the faith of the litigant denudes the Court of its raison d‟ etre .
I have always found the following passage from Joy v. Regional
59
Transport Authority , from a short decision rendered by K.S.
Radhakrishnan, J. (as he then was), sitting singly in the High Court of
Kerala to be a useful pointer:
―4. Judicial discipline demands consistency in rendering
judgments. A Judicial Officer may hold different views on various
aspects. A Judicial Officer may err and pass contradictory orders
inadvertently. But once it is brought to the knowledge of the Judicial
Officer, he is duty bound to keep track of consistency. In-consistent
orders passed by a judicial officer almost in the same fact situation,
and that too on the same day, would give rise to complaint of
discriminatory treatment, which will undermine the people's faith in
judicial system and the rule of law. It will cause resentment and
anguish and make an imprint in the mind of the litigant that he has
been discriminated. A Judicial Officer may err and pass illegal orders,
but he shall not err in consistency. He should be consistent even in
illegality.‖


59
1998 SCC OnLine Ker 344
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Needless to say, the concluding sentence in this passage is not to be read
in absolute terms; what the learned Judge seeks to convey is that, while
legality is a matter of subjective satisfaction, consistency is non-
negotiable. Inconsistent orders, even at the interlocutory stage, therefore,
are to be sedulously avoided, if the facts are identical.

122. The sequitur is also, however, true. If the facts before the Court
are different from those which were before the Court which passed the
earlier interlocutory order, the later Court should assess whether the
factual distinctions would justify a different conclusion, and not blindly
follow the earlier order. At the end of the day, as in most cases, the
judicial conscience is the ultimate arbiter.

123. Applying these principles to the present case, there is substance in
Mr Lall‘s contention that the design of the defendants‘ bottles in Diageo
4
v. Great Galleon being fundamentally different from those of his
(present) client, it is not possible to adopt, straightaway, the order passed
in that case while examining the aspect of infringement in the present.
53
This is apparent from the following extracts from paras 39 , 57 and 71 of
4
the report in Diageo v. Great Galleon :

*

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71. … Indeed, the design has the ubiquity; it is travel-sized slim,
glossy, angular, and has fit-in-the-pocket characteristics of the
smartphone. To that effect, it is also not the Defendant's case that there
exists a prior-publication which is based upon the lean and thin design
of a smartphone. The Plaintiffs' product is the first in the market to
take the visually-appealing features of a smartphone and apply it to
pre-packaged alcohol . None of the third-party products shown by the
Defendant are pre-filled flasks which have the striking ocular
attraction of the Hipster bottles. … The aesthetic appeal (or in other
words, the pleasing, attractive appearance) which is the sum total of
the configuration of the unique features discussed above (rounded
shoulders, V neck, symmetrical design, raised front and back etc.) is
the novelty that needs protection. It is not just a trade variant of
previous design, as sought to be trivialised by the Defendant. A bottle
is undoubtedly a common article which has common features, such as
neck, shoulders, etc. It is an article that offers limited artistic freedom
to innovate. Yet, it has been significantly transformed in the Hipster,
with distinguishable features, giving it an aesthetic appeal that had not
been conceived hereinbefore.‖
(Emphasis supplied)



124. From these passages, it is apparent that the coordinate Bench has,
4
in Diageo v. Great Galleon , identified certain features of the suit design
as being distinctive and imparting novelty to it. These are its (i) long,
lean and sleek design, (ii) curved shoulders, (iii) ‗v‘ element on the neck,
(iv) rectangular shape similar to a smartphone, (v) dimpled base, (vi)
symmetrical edges, (vii) protruding v-shaped neck, (viii) symmetrically
raised plateau like front and rear walls and (ix) two-toned rim and cap.
These distinguishing features, it was noted, were common to the suit
design as well as to the design of the infringing bottle in Diageo v. Great
4
Galleon . It is on this basis that the coordinate Bench held the
4
defendant‘s designs in Diageo v. Great Galleon to be infringing of the
suit design.
125. This Court has been aided by learned Counsel who have provided,
to the Court, physical samples of the defendant‘s bottles in Diageo v.
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shape and size, as it affords stability to the bottle when placed in a
standing position, as compared to a flat base.

127. While, therefore, this Court would undoubtedly keep in mind the
4
decision of the coordinate Bench in Diageo v. Great Galleon , yet, given
the several features of dissimilarity between the defendant‘s bottle in the
4
present case and the bottle of the defendant in Diageo v. Great Galleon ,
especially when seen vis-à-vis the suit design, the Court would have to
examine the present case, on the aspect of design infringement, as if it
had, before it, a tabula rasa .

Novelty and Originality

128. One may next address the finding in the decision in Diageo v.
4
Great Galleon on the aspect of novelty of the suit design.

4
129. The suit design in Diageo v. Great Galleon and the suit design in
4
the present case are the same. In Diageo v. Great Galleon , the
coordinate Bench has found the said design to be novel vis-à-vis prior art.
Mr. Lall, while initially stating that he would not be arguing on the point
of novelty, as in view of the decision of the coordinate Bench, later
sought to contend that the aspect of validity of the suit design was also
open to re-examination in view of para 40(c) of the plaint, as already
noted in para 59 supra .

130. The submission, in my view, merits serious consideration.
However, as a coordinate Bench has, albeit at the interlocutory stage,
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found, prima facie , merit in the plaintiffs‘ contention regarding novelty
of the suit design vis-à-vis prior art, keeping in mind the principles
enunciated in the decisions cited hereinbefore, I do not propose to revisit
the said issue.

131. I would proceed, therefore, on the premise that the suit design
possesses novelty vis-à-vis prior art.

Scope of Section 22 of the Designs Act and the aspect of piracy vis-à-vis
para 46 of the plaint

132. Section 2(d) of the Designs Act defines ―design‖ as meaning ―only
the features of shape, configuration, pattern, ornament or composition of
lines or colours applied to any article whether in two dimensional or three
dimensional or in both forms, by any industrial process or means,
whether manual, mechanical or chemical, separate or combined, which in
the finished article appeal to and are judged solely by the eye….‖.
Trademarks are statutorily excluded from the definition ―design‖ in the
same clause. ―Article‖ is defined in Section 2(a) as meaning ―any article
of manufacture and any substance, artificial, or partly artificial and partly
natural‖. ―Copyright‖ is defined in Section 2(c) as meaning ―the
exclusive right to apply a design to any article in any class in which the
design is registered‖. Section 2(g) defines ―original‖, in relation to a
design, as meaning ―originating from the author of such design and
(including) cases which though old in themselves yet are new in their
application‖.

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49
133. Section 4 prohibits registration of certain designs, including
designs which are not new or original [ vide clause (a)] and designs which
are not significantly distinguishable from known designs [ vide clause
60
(c)]. Parallelly, Section 19 permits the said disabilities to be urged as
grounds to contest the validity of a registered design, and also as defenses
61
to a plea of piracy, when read with Section 22(3) .

134. Section 6(1) permits a design to be registered in respect of any or
all of the articles comprised in a prescribed class of articles. Section
11(1) confers, on the registered proprietor of a design, consequent to its
registration, copyright in the design for ten years from the date of
registration, extendable by a period of five years under Section 11(2).

135. Section 19 deals with the circumstances in which a person could
seek cancellation of registration of a design, and Section 22 deals with
piracy of registered designs. Both provisions already stand reproduced.

Judicial Precedents

136. One may now advert to certain binding judicial precedents having
relevance to the issues in controversy.

62
137. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd


60
See FN 3,5 ibid
61
See FN 2 ibid
62
(2008) 10 SCC 657
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Digitally Signed By:SUNIL
SINGH NEGI
Signing Date:20.12.2022
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Neutral Citation Number : 2022/DHC/005661
137.1 Gopal Glass Works Ltd. (―Gopal‖) claimed to be the originator of
new and original industrial designs, for application by a mechanical
process to glass sheets, some of which were registered and some awaiting
registration. The design with which the court was concerned was
th
registered on 5 November 2002. Gopal claimed exclusive copyright on
the said design, as applied to glass sheets. The glass sheets, bearing the
design, were marketed under the name ―Diamond Square‖.

137.2 Bharat Glass Tube Ltd. (―Bharat‖) and its associate IAG Company
Ltd. (―IAG‖) started imitating Gopal‘s registered design. Gopal sued
Bharat for piracy, vide Civil Suit 1 of 2004 instituted in the district court
of Mehsana. The learned District Judge restrained IAG from infringing
Gopal‘s registered Design No. 190336.

137.3 Bharat filed an application under Section 19 of the Designs Act
before the Controller of Patents and Designs for cancellation of Design
No. 190336, on the ground that it had been previously published in India
and abroad and was not, therefore, new and original. Reliance was
placed, by Bharat, on a catalogue of M/s Dornbusch Gravuren GmbH
(―Dornbusch‖), which, Bharat claimed, had developed an identical design
in 1992, as well as a document downloaded from the official website of
nd
the Patent Office of the United Kingdom on 22 September 2004
indicating that the same design had been registered in the United
Kingdom by M/s Vegla Vereinigte Glaswerke GmbH in 1992.
137.4 Gopal contested the application. It was submitted that Dornbusch
was merely engaged in manufacturing engraving rollers. The rollers were
used to manufacture glass sheets to which Design No. 190336 was
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SINGH NEGI
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Neutral Citation Number : 2022/DHC/005661
engraved. Gopal submitted that Dornbusch never manufactured
engraved glass sheets using the engraving rollers. Dornbusch, it was
submitted, had sold the engraving rollers to Gopal, granting it exclusive
user rights in India for at least five years. Gopal also disputed the
entitlement of Bharat to rely on material downloaded from the UK Patent
Office.

137.5 Holding that Design No. 190336 was not new or original, as it had
been published outside India, as well as in India prior to the date of
application by Gopal, the Assistant Controller of Patents and Designs set
aside the registration of Design No. 190336. Gopal appealed against the
said decision under Section 36 of the Designs Act. A learned Single
Judge of the High Court allowed the appeal and reversed the decision of
the Assistant Controller. Bharat appealed, against the said decision of the
learned Single Judge, to the Supreme Court.

137.6 Dealing with the issue, the Supreme Court outlined the sole
purpose of the Designs Act, in para 26 of the report, thus:

137.7 The prohibitions under the Designs Act, held the Supreme Court,
―have been engrafted so as to protect the original person who has
designed a new one by virtue of his own efforts by researching for a long
time‖. Reliance was placed, by the Supreme Court, on para 27.01 of P.
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SINGH NEGI
Signing Date:20.12.2022
21:43:10

Neutral Citation Number : 2022/DHC/005661

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Digitally Signed By:SUNIL
SINGH NEGI
Signing Date:20.12.2022
21:43:10

Neutral Citation Number : 2022/DHC/005661

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Digitally Signed By:SUNIL
SINGH NEGI
Signing Date:20.12.2022
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Neutral Citation Number : 2022/DHC/005661

(Emphasis supplied)