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IN THE HIGH COURT OF DELHI
C. Hari Shankar, J.
Diageo Brands B.V. - Appellant
Versus
Alcobrew Distilleries India Pvt. Ltd. - Respondent
CS(COMM) 30 of 2022 & I.A. 725 of 2022
Decided On : 19-12-2022
Important Points
Subject
Intellectual Property - Design Law
Headnote
(B) Design Infringement - The key issues involved distinguishing features of the suit design versus the alleged infringing design and the perspective from which infringement must be viewed - The Court clarified that while examining infringement, the eye of the consumer is not sufficient; the instructed eye approach must prevail, considering prior art (Paras 156, 161, 162)
(C)
Facts of the case:
The plaintiffs, Diageo Brands B.V. and United Spirits Ltd., claimed piracy of their unique bottle design, termed the 'Hipster' against Alcobrew Distilleries - Plaintiffs contended their design appealed to the eye and was distinctively novel. (Para 4)
Findings of Court:
The Court found that prima facie, the defendant's bottle did not infringe the plaintiff's registered design based on a substantial examination of key differentiating features observed. (Paras 174-175)
Issues: The main issues were the differences in design versus prior art, the perspective from which the eye appeal is assessed, and the validity of the design amidst claims of piracy.
Ratio Decidendi: The Court ruled that the comparative analysis showed that the defendant's alleged imitation did not amount to piracy within the statutory meanings, emphasizing the uniqueness and originality of the contested design.
Result: Application dismissed.
JUDGMENT
C. Hari Shankar, J.
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 meaning of Section 22(1)1 of the Designs Act, 2000 of their registered Design No. 306577. The defendant, invoking Section 22(3)2 read with Section 19(1)(b) and (c)3 , alleges, per contra, that the plaintiffs' design is bad on account of prior publication, and is lacking in novelty and originality vis-a-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-a-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 Pvt. Ltd, 2022 SCC OnLine Del 2350 (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 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- a-vis prior art, they, equally, apply to the suit design vis-a-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 plaintiffs contend, per contra, that, firstly, the scope of `novelty analysis' of the suit design vis- a-vis prior art is different from the scope of `infringement analysis' of the suit design vis-a-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-a-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-`- vis prior art, also distinguish the defendant`s design vis-a-vis 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 suit design vis-a-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 D
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