Yardstick For Determining Infringement Of Trade Dress Is Overall Impression Of Design, Subtle Dissimilarities Irrelevant: Delhi High Court

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.

"Impugned design need not be an exact replica to constitute infringement. Minor changes in size are insignificant as the overall and substantial similarity is glaring and undeniably apparent to the naked eye," a single bench of Justice Sanjeev Narula observed.

The observation was made while deciding a suit filed by Diageo Brands, manufacturer of famous whisky brand 'Black Dog' against another alcohol manufacturer Great Galleon Ventures.

Great Galleon is manufacturer of 'Goa Gold' and was accused of copying the design and overall get up of plaintiff's "Hipster" bottles, modelled on the shape and proportions of a smartphone.

Plaintiff claimed that its essential features reside in its: (a) tall, lean and sleek look, (b) rectangular shape inspired from the shape and proportion of a smartphone; (c) smooth rounded shoulders and symmetrical edges; (d) protruding V-shaped neck situated at the middle of both shoulders; (e) symmetrically raised and plateau-like front and rear walls; (f)two-toned rimmed and rounded cap; and (g) dimpled bottom.

Finding a prima facie case in favour of the plaintiff, the Court made absolute its ex-parte order granting interim relief to Diageo Brands and restrained the defendant from dealing in the allegedly infringing products, until final disposal.

The Judge dismissed the defendant's argument that plaintiff's bottle design is not "novel".

It was the defendant's argument that a bottle/hip flask has been used for the purpose of carrying liquid since time immemorial and their design certainly lies in the public domain.

The court however found that plaintiff's product 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…Yet, it has been significantly transformed in the Hipster, with distinguishable features, giving it an aesthetic appeal that had not been conceived hereinbefore. This clearly meets the threshold of 'new and original' as it creates an altogether different impression on an informed user, entitling the Plaintiff to exclusivity"

The court went on to reject defendant's argument on "mosaicing".

It was the defendant's case that that Plaintiffs have merely 'cobbled together' known integers to come up with its so-called registered bottle design.

The court however held,

"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…"

It added that the onus was on the defendant to show which particular known designs were allegedly combined to get the Plaintiff's Registered Design and that the Court cannot undertake this exercise on its own.

The bench thus made it clear that concept of novelty applicable to patent law cannot be strictly applied to the Designs Act and in the context of the Designs Act, the word "novelty" would simply mean "new and original".

Case Title: Diageo Brands BV & Anr. v. Great Galleon Ventures Ltd.

Citation: 2022 LiveLaw (Del) 804