Trademark In IndiaDelhi High Court Identifies a Test for Recognizing Design Infringement

January 16, 20230

The High Court of Delhi in Diageo Brands B.V. & Anr. vs Alcobrew Distilleries India Pvt., decided on 19.12.2022 [2022/DHC/005661], held that the aspect of design piracy has to be examined from the point of view of an expert who is experienced enough with prior art to reasonably discriminatory and able to appreciate details.


Diageo Brands B.V. & Anr., (hereinafter referred to as “the Plaintiff”) is the proprietor of Pocket Scotch under which it packages and sells alcoholic beverages in a “Hipster” bottle. The Plaintiff has been granted a certificate of registration, which validates the novelty of the bottle’s general shape and construction.

According to the Plaintiff, a smartphone was used as the basis for “Hipster” design so that it could be carried in the pocket easily. This made the Plaintiff’s bottle more exciting, accessible, unique and convenient to the consumers. The distinctive features of the bottle are said to have created a unique trademark that serves as a source indicator for the Plaintiff’s products.

On the other hand, Alcobrew Distilleries India Pvt. (hereinafter referred to as “the Defendant”) manufactures and sells alcoholic beverages in a bottle named ‘Golfer’s Shot’.

The Plaintiff claimed that the design of the Defendant infringes the suit design of the Plaintiff which shows that the Defendant was clearly attempting to wrongfully gain on the goodwill that the Plaintiff had built through the suit’s design, thus being violative of Section 22(1) of the Designs Act, 2000 (hereinafter referred to as “Designs Act”).

According to the Plaintiff, the Defendant’s promotion of its product under the name “Pocket Shot” was an effort to mislead the consumers of the Plaintiff’s product, which is marketed as “Pocket Scotch”.

The Defendant began promoting and selling its 180 ml “Golfer’s Shot” whisky in the bottle with the allegedly infringing design after the Plaintiff’s 180 ml “Hipster” design became popular, while retaining the original bottles for all other sizes.

Thus, aggrieved by the same, the Plaintiff filed the present suit before the Hon’ble High Court of Delhi (hereinafter referred to as “High Court”).


  1. Is the scope of analysis different when considering the aspects of innovation and originality of the suit design and piracy of the suit design?
  2. Whether the comparison of novelty has to be examined by an expert of prior art or by an eye of an ordinary purchaser?


The Plaintiff submitted 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. The Plaintiff also asserted that the Defendant’s fraudulent intent was clear because the impugned design in this case was a dishonest reproduction of the suit design due to differentiating elements.

The Defendant, on the contrary, submitted that there is no possibility of any misinterpretation between the designs of the Defendant’s and Plaintiffs’ since they are drastically different from one another.  According to the Defendant, the differences could be seen, among other things, in the product’s height, thickness, and roundness of the shoulders and caps.

The Defendant further claimed that the suit design’s shape and configuration are not original but rather standard in the industry and resemble a number of previously published designs. The simple monochrome patterns, basic rimmed caps, and rectangular bottles with rounded shoulders are typical characteristics of the bottles in the liquor industry.

The Defendant submitted that the deformed base of the Plaintiff’s’ design is merely a functional element which is included in all bottles with that shape and structure and serves to give the bottle stability while it is upright.

The Defendant also contended that such traits, which are common to the industry and could be found in many similar brands, cannot be monopolized. The Defendant relied on Section 22(3) of the Designs Act, which allows every ground on which a registered design could be cancelled as a ground of defense to an infringement proceeding.

The Defendant claimed that the bottle in which they sell their “Golfer’s Shot” alcoholic beverage is not an obvious or fraudulent reproduction of the Plaintiffs’ suit design, and hence does not constitute “piracy” under Section 22(1) of the Designs Act.


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.

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 differentiating characteristics of the suit design in comparison to such previous art, which the Plaintiff cited as evidence for their claims of uniqueness and originality, appear to apply equally to separate the suit design from the challenged design.

Therefore, the High Court held that the Defendant’s design did not infringe the design of the Plaintiff and that the Plaintiff did not establish a prima facie case of the Defendant’s obvious or fraudulent imitation of the suit design by the design of the Defendant’s bottle.


The Designs Act was created to safeguard innovative designs that were created to be applied to, or to regulate configuration of certain products that were going to be manufactured and sold commercially.

The market power is restricted to the manufacturing of innovative and creative designs, which is what the legislation aims to encourage. Only when the originality of the design has been established, it can be registered, and only after such registration can the design start to have market dominance over rival designs.

As a result, expecting two designs to be infringing solely based on their “look and feel” or due to the fact that they appear to be imitations to the untrained eye is ignorant of the law’s specific and limited inducement of novelty.

The average consumer has no idea about this particular novelty in relation to prior art. Even with past art similarities, two designs might appear to the observant eye to be quite similar. Thus, for the purposes of design infringement, the observer must be knowledgeable about prior work, which shall be a deciding factor in such design piracy or infringement issues.

Team AMLEGALS assisted by Ms. Dia Ambavi (Intern)

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