Breweries alleging design and trademark infringement, and passing off. Carlsberg's claim was based on:

  • the unique and distinctive bottle and trade dress/get-up of its Tuborg beer bottle registered under the Designs Act 2000;
  • an infringement of registered trademark 'Clockman shape label' on the bottle; and
  • common law rights in the distinctive shape of the bottle.

Carlsberg alleged that Som had adopted an imitation of its registered bottle design, trademark and trade dress to sell its Hunter beer which amounted to infringement of design, trademark and passing off. Carlsberg also filed an injunction application to restrain Som from carrying on its infringing activities. The interim injunction application was considered by the court and it ruled in favour of Som. Som countered Carlsberg's claim on the following grounds:

  • A composite suit filed for infringement of registered design, registered trademark and passing off is not maintainable;
  • Carlsberg by subsequently filing another suit alleging passing off, seeking injunction and other reliefs had indicated that it could not uphold the instant suit filed.
  • With regard to design infringement, the test to be applied is of a knowledgeable person who knows the field and not of an unwary customer. Further, design resides in the shape of the bottle without the label and when the designs of the bottles are compared there are marked differences.
  • In 2011 Som had initiated steps to adopt a new design for its Hunter beer and the bottle design and label it adopted were the result of its creativity and efforts.
  • There was no novelty in Carlsberg's bottle design as the shape, pull caps and labels are common to the trade over which they cannot claim any monopoly.

After hearing extensive arguments over several days, considering the various case law cited by the parties and examining the documentation, the court made the following observations:

  • With regard to validity of Carlsberg's design, the court considered whether the design was novel and appealed to the eye. It also considered the similarity or difference of the rival designs and held that Carlsberg's bottle by itself was not new or novel and was like any other bottle existing in the prior art.
  • The court remarked: "though the indentations/groovings may be novel as such the bottles of other manufacturers may not have identical indentations/groovings, the idea of adopting a bottle design with indentation/groovings is not new in itself, since there are scores of other bottles being used by other vendors of beer and other beverages, and other products, which too have indentations/groovings". Further, Carlsberg had not claimed novelty in any particular feature of the bottle, but the bottle as a whole.
  • When the two bottles were compared it could not be said that the Hunter beer bottle was an obvious imitation. The adoption of the Hunter beer bottle design appeared to be bona fide - taking into account Som's consultations with design professionals dating back to 2011.
  • The balance of convenience also favoured Som as it had invested heavily in designing and procuring its bottles.

With regard to the filing of a composite suit by Carlsberg for design infringement, trademark infringement and passing off, the court decided that it was bound by an earlier decision of the three-judge bench (also referred as a full bench) where it was held that a composite suit for infringement of a registered design and a passing off action would not be maintainable. The court observed, however, that it could try the suits together if they were filed in close proximity and there were aspects which were common to the suits. The court noted that since Carlsberg has filed another suit for passing off and other reliefs the consideration in the instant suit would be limited to infringement of the copyright in the registered design. The court also disagreed with the previous decision of the full bench in relation to maintainability of a composite suit with regard to design infringement and passing off and recommended placing the issue of maintainability of a composite suit before a larger bench (of four judges) for reconsideration.