Great Galleon drinking from the same bottle as Diageo Brands B.V.

Diageo Brands B.V. (the Plaintiff), owner of inter alia ‘Black Dog’ “VAT 69” brands, filed a suit against Great Galleon (Defendant), marketer of ‘Goa Gold’ whiskey for infringement of Design (hereinafter “Hipster’s design”), passing off of trade dress and get-up of the ‘Hipster’ bottles’.

Last week, the Delhi High Court granted an interim injunction against the Defendant and held that the Plaintiff prima facie established that the Defendant’s impugned product is an obvious and slavish imitation of Plaintiffs’ Registered Design. The Court observed that:

The yardstick for infringement is ‘visual effect’, ‘appeal to the eye’ of the customer’ and ‘ocular impression’ of design, as a whole, and not to look out for subtle dissimilarities, but rather, to see if there is substantial and overall similarity in the two designs. The Court held that all the unique, essential, and novel features of the Hipster: long, lean and sleek design, curved shoulders, ‘v’ element on the neck, etc. are present in the Impugned Product.

The Court observed that the Defendant was unable to establish that the Registered Design is liable to be cancelled on the ground of not being a new or original design, mosaicing or functional in nature.

Looking at the prior design applications/registrations cited by the Defendant, the Court was prima facie convinced of the novelty and originality of the Plaintiffs’ Registered Design.

The Court rejected the Defendant’s argument that that the Plaintiff has merely ‘cobbled together’ known integers, or that the Registered Design is liable to be cancelled on ground of “mosaicking”. The Court held that position of law on this aspect is well settled, i.e., individual features of a design should not be dissected to try and find them individually in each prior art; instead, a conspectus of features as a whole should be seen.

The Court rejected the argument that the said design is liable to be cancelled on ground of being functional in nature, i.e., the shape and configuration is designed to fit a hip-pocket. It was held that for the ground of functionality to succeed, the Defendant must establish that the Plaintiffs’ Registered Design is the only way possible to manufacture/create a given article, considering the functional requirements of the product.

While holding that the Plaintiff is entitled to an interim injunction based on design infringement, the Court added that no case of passing off action has been made out. More specifically, the Court was not entirely convinced that apart from the black & gold colour scheme, there is any similarity in the labels, trade dress, and get-up.

In addition to the aforesaid, the Plaintiff had also claimed that the shape can also be protected as a trademark, if it is used as a source identifier. However, while examining the issue of passing off, the Court clarified that the present claim of the Plaintiff is analyzed squarely on the aspect of passing off of the trade dress, overall get-up, and presentation of the product through packaging. Further, it was held that at this interim stage, similarities in designs are not sufficient to grant injunction on a passing off action, particularly when the test of passing off is not met.