Carlsberg Breweries (‘Plaintiff’) filed a suit before the Delhi High Court against Som Distilleries and Breweries (‘Defendant’) for infringement of its registered design bearing no. 244246, infringement of its registered trade mark/label and passing off its goods and services by adoption of a bottle imitating its registered design, registered trade mark and trade dress in respect of identical products. The Delhi High Court on 2 May 2017 passed an Order in relation to an application for an interlocutory injunction made by the Plaintiff. This article provides a brief analysis of the Order dated 2 May 2017.

The Defendant submitted that in light of the decision of the Full Bench of the Delhi High Court in Mohan Lal, Proprietor of Mourya Industries Vs. Sona Paint & Hardwares, 2013 (55) PTC 61 (Del.)(FB), a composite suit combining the reliefs for design infringement, trade mark infringement and passing off was not maintainable. In the said Full Bench decision, the Court considered whether an action for passing off could be combined with an action for infringement under the Designs Act 2000. The Full Bench held that since the cause of action for bringing a suit for infringement of a registered design was different from the cause of action on which a claim of passing off is based, two separate suits would need to be filed for each cause of action. The Full Bench, in order to arrive at this conclusion, relied on the decision of the Supreme Court in Dabur India Limited vs K.R. Industries (2008) 10 SCC 595.

The Plaintiff put forth the argument that the decision of the Full Bench of the Delhi High Court in the Mohanlal case was per incuriam. The Plaintiff argued that the Full Bench had overlooked the statutory provision of Order 2 Rule 3 of the Civil Procedure Code which specifically allows for joinder of causes of action. The Plaintiff also argued that the Full Bench incorrectly relied on Dabur India Limited vs K.R. Industries as the Supreme Court in Dabur India Limited vs K.R. Industries, held that two causes of action cannot be joined in the same suit, if the same Court does not have the territorial jurisdiction to deal with both of them.

Justice Vipin Sanghi agreed with the Plaintiff’s submissions that Order 2 Rule 3 of the Civil Procedure Code may have escaped the attention of the Full Bench in the Mohan Lal case. Justice Vipin Sanghi also agreed with the Plaintiff’s submissions that the Full Bench may not have interpreted the Supreme Court’s decision in Dabur India Limited vs K.R. Industries in the correct context.

Justice Vipin Sanghi made a reference of the decision passed by the Full Bench of the Delhi High Court in the Mohan Lal case to the Chief Justice and requested the matter to be considered by a bench comprising more than three Judges. In particular, the bench to be constituted should consider whether a composite suit for infringement of registered design and passing off is maintainable, in light of Order 2 Rule 3 of CPC, where the parties are the same.

The referral by Justice Vipin Sanghi to a larger bench will bring much needed clarity in this field of law. It will also prevent multiple proceedings being initiated by the same parties where there is significant overlap in the subject matter of the suits.

Justice Vipin Sanghi, expressing that the Court was bound by the decision in Mohan Lal until it was considered by a larger bench, limited the case before the Court to infringement of copyright in the registered design of the Plaintiff’s beer bottle.  

The Plaintiff put forth the argument that during the proceedings, in an affidavit, the Defendant conceded and acknowledged the Plaintiff’s copyright in the design of its beer bottles. On consideration of the affidavit, Justice Vipin Sanghi held that the Defendant in the affidavit did not contest the registered design of the Plaintiff ‘in order to bring an end to the litigation between the parties’. He further highlighted that the Defendant had not conceded that the Defendant’s beer bottle design was similar to the registered design of the Plaintiff’s beer bottle. The Court held that when the affidavit is considered with the orders of the Court in the present case, it is clear that the affidavit was filed with a view towards overall settlement of the disputes. Additionally, the Court held that the undertaking by the Defendant that they would within four months adopt a new unique design for Hunter beer cannot be taken as an undertaking that they would no longer use bottles with the impugned design in the market after four months.

The decision of the Court in relation to the affidavit filed by the Defendant blurs the difference between without prejudice negotiations between the parties and submissions on affidavit before the Court by the parties. While a statement similar to the one made by the Defendants in without prejudice negotiations between the parties is likely to not be binding on a party, it is difficult to see why the same standard is applied to a statement made by the Defendant on affidavit in Court proceedings. One would assume that such statements on affidavit would be binding on the party making them.

The Defendant put forth the argument that when compared to previous beer bottles, it was evident that there was no novelty or originality in the Plaintiff’s registered design and that the design of the Plaintiff’s beer bottle was common to the trade.

The Court, on the basis of the judgement in Castrol India Ltd. v. Tide Water Oil Co. (I) Ltd., 1996 (16) PTC 202, held that functional shape and configurations, which are dictated solely by functionality, are not registerable under the Designs Act 2000. The Court, on the basis of case law, further held that there has to be novelty and originality which would render a particular design to be protectable. Such novelty must not be trivial in nature but must instead be substantial. The novelty must be potent to ensure that the entire design is distinct and dissimilar from previous designs.

The Court noted that the Plaintiff’s design registration claimed novelty of the entire beer bottle and not in respect of any part of it. The Court, in particular, relied upon the statement of novelty in the design registration certificate. The statement of novelty in the design certificate read ‘The novelty resides in the shape and configuration of the bottle’. The bottle, according to the Court was not by itself new or novel. It was like any other bottle existing in the prior art. The indentation and grooving on the Plaintiff’s beer bottle was also held not to be novel as there were several other bottles that bore indentations and groovings. The Court also held that the indentations and groovings could be held to be functional as they serve the purpose of providing a grove where the label can be affixed. The Court, therefore held, that prima facie, the Plaintiff’s beer bottle design registration may not be worthy of protection and may be liable to be revoked. The Court further held that prima facie, the Defendant’s bottle does not appear to be a fraudulent or obvious imitation of the Plaintiff’s bottle design. The Court held that they both appear to be ordinary beer bottles like the ones available in the market. The Court, therefore, did not grant an interlocutory injunction in favour of the Plaintiff.

The emphasis by the Court on the statement of novelty to determine the novel and original aspect of the design is likely to have an impact on the manner in which the statement of novelty is hereafter drafted by design prosecution attorneys. As in patent prosecution, design prosecution attorneys will now have to ensure that the statement of novelty is specific enough to set out the novel aspects of the design sought to be registered but at the same time is wide enough so that competitors cannot circumvent the design registration by making trivial and inconsequential changes to the design.