Liquor bottles are often designed well enough to buy on looks alone, and the work behind that packaging is underrated. Carlsberg’s Tuborg bottle was registered as a design — and lost an infringement claim on a single sentence its attorneys had drafted years earlier.
The claim
Carlsberg Breweries sought an injunction in the Delhi High Court against Som Distilleries and Breweries Limited, makers of Hunter beer, alleging its bottle design was an obvious imitation of the Tuborg bottle.
Carlsberg pointed to similarities in the neck portions, the indentations, the grooves, and identical labels — its distinctive Clockman shape label — and the placement of each.
Som’s defence
Som argued three things.
First, on the test: unlike trademark infringement, design infringement is assessed by whether a knowledgeable person aware of the particular field would be confused or deceived — not an unwary customer. That is a materially higher bar, since a person familiar with beer bottles notices differences an ordinary shopper never would.
Second, that what is protected is the shape of the bottle, not its label, and there were apparent differences between the two bottle designs.
Third, that the Tuborg design lacked novelty — the shape, labels and their placement being common to the trade, and therefore incapable of supporting a monopoly.
The decision
The court held the Carlsberg design not novel, resembling bottle designs already in existence — prior art.
The crucial passage concerns what was claimed. The indentations could be novel. But Carlsberg had claimed novelty in the design as a whole, not specifically in the indentations.
The registration’s statement of novelty read: “The novelty resides in the shape and configuration of ‘BOTTLE’ as illustrated.” Justice Sanghi read that literally — the plaintiff had not claimed novelty and appeal to the eye in respect of any peculiar feature; the whole bottle had been registered as the design, and the shape of the bottle as a whole undoubtedly existed in the prior art.
Had Carlsberg claimed novelty specifically in the indentations and grooves, the judgment would probably have gone the other way.
The court was also unpersuaded that Som’s bottles were an imitation, Som having produced adequate evidence of its own substantial expenditure on bottle design.
The lesson for drafting
This is the practical takeaway, and it applies to every design filing.
IP attorneys commonly write a generic statement of novelty, with the innocent intention of claiming the design as a whole and thereby claiming as much as possible. Judges read these literally. A claim to the whole shape is a claim to something that, for most products, already exists in prior art — so the broad claim protects less than a narrow one would.
Where the genuine novelty sits in a specific feature, say so. Identify the indentations, the grooves, the particular element that makes the design new. Exercise caution when drafting the statement of novelty — it is one sentence, written at filing, that determines what you can enforce years later.
The composite suit question
Som also argued the suit was not maintainable, because Carlsberg had sued for both design infringement and passing off. It relied on the Delhi High Court Full Bench decision in Mohan Lal v. Sona Paint & Hardwares (the Micolube judgment), which held a composite suit for the two was not maintainable.
The court relied instead on the Supreme Court’s decision in Dabur India Limited v. K.R. Industries, which held that two causes of action cannot be combined only where they do not arise within the jurisdiction of the same court. Jurisdiction clauses do differ — for trademark infringement a plaintiff may sue where it carries on business, while for passing off it may sue only where the defendant resides or the cause of action arises. And Order II Rule 3 CPC, on joinder of causes of action, plainly permits combining causes where the defendants are the same.
Justice Sanghi, while acknowledging the court was bound by precedent, subtly indicated that Micolube may need reconsideration — observing that suits could be tried together where filed in close proximity with common aspects.
That reconsideration came. A five-judge bench of the Delhi High Court in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. (2018) — the same litigation — overruled Mohan Lal on this point, holding that a composite suit for design infringement and passing off is maintainable where the parties are the same and the causes of action arise from the same transaction. The doubt expressed here was vindicated within a year.
The takeaways
- The informed-observer test governs designs — not the unwary customer.
- A generic statement of novelty claims the whole shape — usually prior art.
- Claim the specific novel feature, at filing; it decides enforceability later.
- Composite suits are now maintainable after the 2018 five-judge bench decision.
Frequently asked questions
What test applies to design infringement in India? Whether a knowledgeable person aware of the particular field would be confused or deceived — not the unwary customer test used in trademark cases.
Why did Carlsberg’s design claim fail? Because its statement of novelty claimed the shape and configuration of the whole bottle, which existed in prior art, rather than the indentations where the novelty actually lay.
How should a statement of novelty be drafted? Identifying the specific feature in which novelty resides, rather than claiming the design as a whole — courts read these statements literally.
Can design infringement and passing off be combined in one suit? Yes — a five-judge bench of the Delhi High Court held in 2018 that a composite suit is maintainable, overruling the earlier Mohan Lal position.