Delhi High Court: The Single Bench of Vipin Sanghi. J. has held that on a prima facie examination, neither the Carlsberg Breweries’ claim for novelty in the design of its ‘Tuborg’ beer bottles was sustainable, and nor its claim of design infringement was made out, and therefore, rejected its application seeking an interlocutory injunction to restrain the defendant from using its bottle design.
The plaintiff (Carlsberg Breweries) had contended that the defendant, the seller of ‘Hunter’ beer, had adopted an imitation of its bottle design, label mark and trade dress, and thereby had infringed its registered bottle design and trademark, and had engaged in passing off. The defendant had submitted since a composite suit for design infringement, trademark infringement and passing off was not maintainable in view of the Full Bench decision of Delhi High Court in Mohan Lal v. Sona Paint & Hardwares, 2013 SCC Online Del 1980, the instant suit should have been confined to the issue of design infringement. The plaintiff, however, contended that the decision in Mohan Lal was per incuriam since Order II Rule 3 of CPC had been overlooked, and the Supreme Court decision in Dabur India Ltd. v. K.R. Industries, (2008) 10 SCC 595, was not correctly appreciated by the Court.
The High Court, being bound by the Full Bench decision in Mohan Lal, restricted the instant case to the aspect of design infringement. However, the Court, keeping in view of the Supreme Court decision in Central Board of Dawoodi Bohra Community v. State of Maharashtra, (2005) 2 SCC 673, requested the Chief Justice to consider whether the decision in Mohan Lal needed reconsideration by a larger bench. Regarding the issue of design infringement, the Court noted that though the indentations/grooving found in the plaintiff’s bottle might be novel, the idea of adopting a bottle design with indentation/grooving was not new in itself. Furthermore, the Court observed that on comparing the beer bottle of the plaintiff as a whole with the beer bottle of the defendant as a whole, and it could not be said that there was any obvious or fraudulent imitation on part of the defendant. [Carlsberg Breweries v. Som Distilleries and Breweries Ltd, 2017 SCC OnLine Del 8125, delivered on May 02, 2017]