Diageo Brands B.V. & Anr. v. Alcobrew Distilleries India Pvt. Ltd.

Relevant Acts and provisions

Designs Act, 2000

Section 22

Provisions considered: Section 22(1) of the Designs Act, 2000, on the test for design infringement and functional features.

Brief facts

Diageo, owner of a registered design for a distinctively shaped whisky bottle, sued Alcobrew alleging that a rival bottle infringed the registered design and was an obvious or fraudulent imitation under Section 22. Alcobrew argued that any similarity arose from functional features, such as a stable base and grip-friendly body, that were common to the trade or dictated by utility rather than by the aesthetic features protected by the registration, and that differences in overall shape and label placement avoided infringement.

Issues before the Court

1. From whose perspective must design infringement under Section 22 be assessed?
2. Do functional features dictated by utility fall within the scope of a registered design's protection?

Court's findings

The Court held that infringement of a registered design must be assessed from the point of view of an instructed or knowledgeable observer familiar with the trade and prior designs in the field, rather than from the perspective of an unwary consumer glancing at a shelf, since the comparison requires an informed visual assessment of shape, configuration, pattern or ornamentation.

The Court held that features of a design that are purely functional or dictated by necessity of use, such as a widened base for stability, cannot found a monopoly under the Designs Act, 2000, and must be excluded from the comparison; only the aesthetic, eye-appealing features of the registered design are relevant.

Applying this standard, the Court found that the alleged similarities related substantially to functional or common-to-trade features and that the overall visual impression of the competing bottle, viewed by an informed observer, was not an obvious imitation of the registered design.

Decision

Interim injunction refused; the suit was directed to proceed to trial.

Keywords

Design Infringement Functionality Novelty Scope Of Design Protection Trade Dress