JUDGMENT

CONTENTS I. BRIEF FACTS ............................................................................................................ 3 II. ARGUMENTS BY THE PLAINTIFFS (IN BRIEF) ........................................................... 6 III. ARGUMENTS BY THE DEFENDANT (IN BRIEF) ......................................................... 7 IV. REJOINDER ARGUMENTS BY PLAINTIFFS ............................................................... 12 V. ISSUES & ANALYSIS ............................................................................................... 13

1. Who is the proprietor of the Registered Design? ...................................... 15

2. What is the legal effect of registration of a design for deciding the relief of grant of injunction? ...................................................................................... 17

3. Has a prima facie case been established to show fraudulent and obvious imitation of the Plaintiffs’ Registered design, so as to warrant an injunction? .................................................................................................... 20

4. Has the Defendant demonstrated any ground of challenge enumerated under Section 19 of the Act, and if so, what is its effect? .......................... 28 A. Whether the Plaintiffs’ Registered Design is liable to be cancelled on the ground of not being a new or original design due to existence of prior art. .............................................................................................. 30 B. Whether the Plaintiffs’ Registered Design is liable to be cancelled on the ground of mosaicing. .................................................................... 41 C. Whether the Plaintiffs’ Registered Design is liable to be cancelled on the ground that it is functional in nature. ............................................ 44

5. Is there similarity in the trade-dress/ get-up, constituting passing-off, and if so, can an injunction can be granted on that ground? .......................... 47 VI. CONCLUDING REMARKS......................................................................................... 53 I.A. 2608/2021 (application by Plaintiffs under Order XXXIX Rule 1 & 2 of the Code of Civil Procedure, 1908) & I.A. 4231/2021 (application by Defendant under Order XXXIX Rule 4 of the Code of Civil Procedure, 1908) 1. The Plaintiffs who claim to have spent millions to develop a “new” 180 ml liquor bottle design – marketed as the “Hipster bottle” – are aggrieved with its lock, stock and barrel copying by the Defendant; who, on the other hand, labels both the Plaintiffs and itself as pirates, sailing in the same high seas of prior art(s).

I. BRIEF FACTS

2. Plaintiffs are part of the Diageo group of companies, involved in the business of manufacturing, selling, distributing and marketing of inter alia alcoholic beverages. Plaintiff No. 1 [Diageo Brands B.V.] is the proprietor of the marks ‘Vat 69’ and ‘Black & White’, including their formative marks, logos, device marks, labels and trade dress. Plaintiff No. 2 [United Spirits Ltd.] is the Indian distributor of Plaintiff No. 1’s brands viz. ‘Vat 69’ and ‘Black & White’, and also manufactures, sells, distributes and markets its own brand i.e., ‘Black Dog’, being the proprietor of its formative marks, logos, device marks, labels and the trade dress.

3. Plaintiff No. 1 is the proprietor of the Plaintiffs’ Registered Design bearing No. 306577 [hereinafter, “Plaintiffs’ Registered Design”] under the Designs Act, 2000 [hereinafter, “Designs Act”] in respect of the bottle design known as “Hipster” in India, and “Pocket Scotch” globally.

4. Plaintiffs also claim common law rights in the trade dress and get up of the Hipster bottle for the products ‘Black Dog (Black Reserve)’, ‘Black Dog (Golden Reserve)’, ‘Vat 69’, and ‘Black & White’ Hipster [hereinafter, “the Hipster” or the “Plaintiffs’ Bottles”]. Plaintiffs assert that the cumulative combination of unique, distinctive, and non-funct