Examining ‘Design Piracy’ In View Of Delhi HC Judgement

The plaintiffs filed a suit of an infringement against Defendant alleging infringement of their registered Design No. 306577, under Section 22(1) of the Designs Act, 2000. The defendant contested the suit with Section 22(3) read with Section 19(1)(b) and (c), stating that the plaintiffs ‘design is not new, and is lacking in novelty and originality through prior art publication.

While dealing with an issue of design piracy, the High Court of Delhi in the matter of Diageo Brands B.V. & Anr. vs Alcobrew Distilleries India Pvt., under its order dated 19.12.2022, held that – “the aspect of design piracy has to be examined from the point of view of the instructed eye of a person who is instructed with prior art, reasonably discriminatory and able to appreciate enough detail. The test of the average consumer, who sees the bottles on a shelf from a distance, would not be the appropriate test to apply.”

Facts of the Case:

In the said matter, Diageo Brands B.V. & Anr., the petitioner (“Diageo”) sells their liquor brands in Hipster – a pocket bottle modelled on the shape of a smartphone and, as it could be conveniently carried in a hip pocket, was marketed, by Diageo, under the name “Pocket Scotch”. The defendant, Alcobrew Distilleries India Pvt., (“Alcobrew”) is also engaged in the manufacture and sale of liquor in a bottle named ‘Golfer’s Shot’, and marketed under the name “Pocket Shots”.

Diageo’s claim before the High Court was that the design of Alcobrew bottle infringes the design rights of Diageo bottle, where Alcobrew, with an intent to imitate their suit design, has clearly violated of Section 22(1) of the Designs Act, 2000 (“Designs Act”). Diageo further claimed that, Alcobrew’s promotion of its product as “Pocket Shot” was an effort to mislead the consumers of Diageo’s product, “Pocket Scotch”.

The High Court of Delhi, in the present matter, dealt with the following issues:

· Is the scope of analysis different when considering the aspects of novelty and originality of the suit design/prior art and piracy of the suit design?

· Whether the aspect of novelty has to be examined by an expert of prior art or by an eye of an average consumer?

Diageo submitted before the High Court that while the novelty of the design had to be tested on the basis of the instructed eye or by an expert, the aspect of infringement had to be examined from the point of view of an average purchaser, and thus Alcobrew’s product is a dishonest adoption which shows reflects mala-fide intention on part of Alcobrew.

Alcobrew countered Diageo’s claim by submitting the designs of Alcobrew’s and Diageo’s are different from one another, variedly, in line with the product’s height, thickness, and roundness of the shoulders and caps. Alcobrew also submitted that the Diageo’s shape and configuration are not original but are standard and resemble previously published designs of the bottles which are common to the industry in similarity with the other brands. Alcobrew further submitted that the Diageo’s product is in violation of Section 22(3) of the Designs Act which allows every ground on which a registered design could be cancelled as a ground of defence to an infringement proceeding.

Observation by the High Court:

The High Court observed that the issue of design piracy has to be investigated from the perspective of a knowledgeable observer who is relatively able to comprehend adequate details. The typical consumer’s test, which involves viewing the bottles on a shelf from a distance, is not the right one to use in the matters of design piracy.

Design piracy, as defined under Section 22 of the Designs Act, only arises when the allegedly infringing design is a transparent or a dishonest copy of the suit design. The distinguishing factor of the suit design in comparison to such previous art, which Diageo cited as evidence for their claims of uniqueness and originality, appear to be common and apply equally to separate the suit design from the design of the product in question.

The High Court decided in favour of Alcobrew’s and held that Alcobrew’s bottle design did not infringe the bottle design of Diageo as any fraudulent imitation of the suit design by the design of Alcobrew’s bottle could not be established by Diageo in present matter.

Read original order here.

Author: Atul Dhyani is a Partner at KAnalysis. Views are personal.