The court determined that design registrations must demonstrate novelty and originality, and that functional elements cannot be claimed as unique in design infringement cases.

JUDGMENT

VIPIN SANGHI, J.

1. By this order, I proceed to dispose of the aforesaid application preferred by the plaintiff under Order 39 Rule 1 & 2 CPC to seek interlocutory injunction. The relief sought in the said application is to seek an ad-interim injunction against defendant, restraining it, its promoters, assigns, successors-in-interest, licensees, franchisees, partners, directors, representatives, servants, distributors, employees, agents etc. from using a design/bottle, which is claimed to be a fraudulent or obvious imitation of Design Representation No.244246, as well as any label/trade dress/get up similar to that of plaintiff’s registered trademark/label and trade dress/get up in any manner whatsoever, upon and in relation to their products/services/business;

2. The plaintiff claims to be a corporation organized and existing under the laws of Denmark. The plaintiff states that it is using a unique and distinctive bottle in respect of its product, viz. beer, under the brand “TUBORG”, design whereof is registered under the provisions of the Designs Act, 2000 . The novelty of the applicant’s registered design resides in the shape and configuration of the bottle.

3. The plaintiff is using its registered trademark, namely, “Clockman Shape Label” which appears as follows:

in respect of its said product being marketed under the mark “TUBORG”. The plaintiff states that its product is being sold with a distinctive trade dress/get up.

The plaintiff states that the defendant, which is also in the same line of business, is marketing its product under the brand name “HUNTER”, and has adopted an imitation of the registered bottle design, registered label mark and trade dress in respect of its product, which is not only leading to infringement of the plaintiff’s registered bottle design; to infringement of its trademark contained in the ‘clockman shape label’, and; to passing off its products as that of the plaintiff. The comparison of the two products depicted by the plaintiff in the plaint, as well as in the present application, is as follows:

4. The plaintiff states that there is an overall similarity in the bottle and packaging of the defendant in respect of its product, with that of the plaintiff. The specific features outlined by the plaintiff, wherein similarity resides are the following:

i) similar neck portions;

ii) use of the arc/groove design on the bottles;

iii) similar indentation on both bottles;

iv) identical placement of the brand HUNTER as that of TUBORG;

v) use of label by respondent similar to applicant’s registered clockman shape label;

vi) identical/deceptively similar placement of the labels on the bottles;

vii) identical pull-off caps on the bottles;

viii) identical/deceptively similar trade dress/get up of the bottles/products.

5. The plaintiff claims significant reputation and popularity of its product being marketed in its unique designed bottle with its label, trade dress and get up. In this regard, it seeks to rely upon its sales figures of its beer TUBORG. The global sales of the plaintiff in respect of TUBORG beer in the years 2012 to 2014 has been disclosed as follows:

6. The gross sales in India of the said product of the plaintiff between April 2009 to March 2015, is disclosed as follows:

7. The plaintiff also claims that it spends large amou