As you may have noticed, liquor bottles are often so exquisitely designed that you would want to buy it just out of admiration for its design. The creative packaging of liquor is often underrated and many do not realize the intricacies involved in the process. In a rather interesting case, Carlsberg Breweries had filed an application with the High Court of Delhi seeking an injunction against Som Distilleries and Breweries Limited, manufacturers of ‘Hunter’ beer, restraining it from using a design which Carlsberg claimed to be an obvious imitation of their Tuborg beer bottle.

Carlsberg’s claims

Carlsberg alleged that the unique and distinctive bottle and trade dress of its Tuborg Beer bottle which is registered under the Designs Act 2000, was copied by Som Distilleries. They cited similarity in the neck portions, the indentations, the grooves and identical labels (their distinct Clockman shape label) and placement of the same.

Som’s arguments

Som argued that unlike trademark infringement; for deciding whether a design has been infringed, the test to be applied is whether a knowledgeable person, one who is aware of the particular field, would be confused or deceived and not an unwary customer. In addition, they stated that the design which is protected is the shape of the bottle and not its label and there are apparent differences in the bottle designs. It was also argued that the Tuborg bottle designs had no novelty as the shape, labels, placement of the same etc. are common to the trade and therefore they cannot claim any monopoly over such design.

The final verdict

The Hon’ble Court held, in an elaborate judgment, that the Carlsberg design was not novel and could resemble any other bottle design already in existence i.e. prior art.  He stated that while the indentations could be novel, the whole idea of having a bottle design with indentations is definitely not new and unfortunately Carlsberg had claimed novelty in the design as a whole and not specifically the indentations. The Court held that it was not convinced that Som’s Hunter beer bottles are an imitation of Carlsberg’s Tuborg as Som had provided more than adequate evidence of its heavy expenditure on its bottle designs.

 Court’s view

The Patents & Designs Certificate issued by the Patents and Designs Office generally carries only representational image of the design and statement of novelty. Now in most cases, the statement of novelty is generally a vague statement as in the instant case where the statement read “The novelty resides in the shape and configuration of “BOTTLE” as illustrated.”

However, the Hon’ble Justice Sanghi interpreted the statement quite literally. He stated “The plaintiff has not claimed novelty and appeal to the eye in respect of any peculiar feature of its bottle registration. The whole bottle has been got registered as a design, and the shape of the bottle as a whole, undoubtedly, exists in the prior art.”  So, in retrospect, if the plaintiffs had specifically claimed novelty in its indentations and the grooves, this judgment would probably have turned in their favour.

Other strands to the case

One of the arguments made by the Defendants was that the suit was not maintainable. Why? Because the plaintiffs had filed for a suit for both design infringement and passing off. They based their argument on the famous Micolube judgment i.e. Mohan Lal Proprietor Of Mourya … vs Sona Paint & Hardwares 2013 (55) PTC 61 (Del.) (FB)] where the Delhi High Court had expressly held that a composite suit for design infringement and passing off is not maintainable. However, the decision which the Hon’ble Court had relied on was the Dabur India Limited vs KR Industries [AIR 2008 SC 3123] where the Hon’ble Supreme Court had stated that two causes of action cannot be clubbed in a composite suit only where they do not arise within the jurisdiction of the same court.

For example, the jurisdiction clauses apply differently for trademarks infringement and passing off because in the former case the plaintiff can sue at the place of his business, whereas in the latter case, the plaintiff can sue only where the defendant resides or where the cause of action arises. More importantly, Order II Rule 3 of the Code of Civil Procedure (CPC) which addresses joinder of causes of action evidently allows for combining different causes of action where the defendants are the same.

Thus, the Hon’ble Justice Sanghi, while stating that the Court was bound by its precedent, also quite subtly stated that the Micolube Judgment may need reconsideration. The Court observed, however, that it could try the suits together if they were filed in close proximity and there were aspects which were common to the suits.

Take away

This long, drawn out judgment makes a couple of important observations. Firstly, the test applied to claim novelty in designs is vastly different from that of a trademark in that; its not the ignorant customer but only one who is aware of that particular industry who is competent to adjudge the similarity between designs. Secondly, IP attorneys have oft adopted the common practice of writing a generic statement of novelty on the Patents & Designs Certificate issued by the Patents and Designs Office. This is with the innocent intention of claiming protection for the design as a whole. However, Judges like Justice Sanghi tend to read these statements literally. For example, in the instant case Carlsberg had claimed novelty in the entire shape and configuration of the bottle although the novelty was in their indentations. Since the shape and entire configuration of the bottle was already common to the industry and therefore existed in prior art, Justice Sanghi interpreted it as exactly that; Prior art. On the other hand, had Carlsberg claimed novelty specifically for its indentations and grooves, they would have stood a better chance. Moral of the story: Exercise caution while drafting the statement of novelty. A couple of other points worth our wits are the overlapping of causes of action and how jurisdiction may be decided in such cases. Thus, this judgment, albeit a long one, makes for a very interesting read and also gives an insight into the intricacies of design.