Carlsberg Breweries vs Som Distilleries

Facts of the case:

 The plaintiff, Carlsberg Breweries, alleged infringement of a registered design and

sued the defendant, Som Distilleries, for imitating the Carlsberg product.
 The plaintiff is using its registered trademark “Clockman Shape Label” for its product
TUBORG. The plaintiff states that the defendant is marketing its product HUNTER by
adopting an imitation of the registered design, registered label mark and trade dress.
Arguments stated by the plaintiff:

 There is a similarity in the bottle and packaging of the defendant’s product with that
of the plaintiff. These features are as following-
o Similar neck portions
o Use of arc on the bottles
o Similar indentation on both bottles
o Identical placement of the brand name
o Use of label like plaintiff’s registered clockman shape label
o Identical pull-off caps on the bottles
o Identical trade get up of the bottles
 They spend large amounts of money for commercial marketing and advertising of
the brand worldwide.
 The defendant was earlier marketing its product HUNTER in a different bottle with
completely different trade dress from that of plaintiff. By the end of April, the
defendant adopted the infringing bottle design, label and trade dress to ride on the
popularity and reputation of the plaintiff.
 Being in the same line of business, the defendant is aware of the plaintiff’s
established reputation and that the designs are exclusively associated with the
plaintiff.
 The defendant has a history of trade mark infringement. The defendant was once
restrained by Court from using the trade mark Tiger Chakra which was similar to the
registered trade mark of Tiger of Heineken Asia Pacific Breweries.
Law applicable in the case:
o The objective of Designs Act 2000 is to protect new or original designs so
created to be applied or applicable to article manufactured.
o The important purpose of design registration is to see that the originator of a
design is not deprived of his/her bonafide rewards by others applying it to
their goods.
o Sec-22 of the Designs Act, 2000 deals with the piracy of registered designs
and the consequences of the same.
Judgement of the Court:

 The defendant was granted four months to sell its beer in the stated bottle design in
the state of Delhi and Madhya Pradesh to utilise approximately 56 lakh bottles
bearing the disputed characteristics.
 The date given was 28-05-2015. However, it was extended till 09-10-2015.
 No new bottle could be introduced in the market.
 However, the defendant stated that the 4 months period was too short to recover
the investment made. So, the matter was adjourned to a further date.
Appeal by the defendant:

 The appeal stated that the defendant was still left with 11,40,000 bottles which have
not been used.
 The defendant requested for an extension to get the unused bottles in mint
condition to be sold.
Judgement by the Court:

 The earlier order left no room for doubt about the deadline to sell the approx. 56
lakh bottles which was further extended and no further.
 Hence, the appeal to extend the time period was not justified.
Another appeal by the defendant:

 Dissatisfied with the aforementioned order, the defendant again preferred an appeal
to grant permission to the defendant to use the disputed design bottles to sell until
31-01-2016.
Arguments stated by the plaintiff:

 The defendant was permitted as a one-time measure to sell its stocks which had
already been manufactured.
 The novel shape of the plaintiff’s bottle – with grooves and indentations, along with
the unique label, have got trade mark significance as defined in Sec- 2(1)(m) of the
Trade Marks Act.
 There is a grave similarity in the label adopted by the defendant with the registered
trademark of the plaintiff and thus, it is likely that the consumer would get confused.
 The essential feature of the plaintiff’s registered trademark is the trademark in
clockman shape which is also adopted by the defendant.

o Trademark is defined in Section 2(1)(m) to mean a mark capable of being

represented graphically, and which is capable of distinguishing the goods
or services of one person from those of others, and may include the shape
of goods, their packaging and combination of colours.
Arguments stated by the defendant:

 There was no unqualified and clear admission of similarity of the bottle design, trade
mark or trade dress.
 As held by the Full Bench of the Court, a composite suit for reliefs is not maintainable
and the plaintiff has filed a suit for infringement of a registered design as well as
reliefs of infringement.
 Thus, the present suit should be treated as confined to the issue of design
infringement of the plaintiff’s beer bottle TUBORG.
 The defendant’s beer brand namely HUNTER is a very well-established brand
introduced in 1995 and is well accepted in the market.
 After more than 15 years of defendant’s launch of beer, in August 2011, the
defendant started working on a new design for its bottle.
 The bottle design and label adopted is the result of a process of evolution premised
on the creativity of the consultant and the preference and feedback received from
the defendant.
 In the process, no one was driven or influenced with the objective of copying the
design of plaintiff’s beer bottle.
 Each label approval costs lakhs of rupees and if the use of same is injuncted, the
defendant would lose all the money invested.
 The criteria while designing the beer bottle shape were aspects such as grip,
simplicity, uniqueness and feasibility.
 The defendant added wings to the labels to differentiate the same from standard
oval labels.
 The pull-off caps used by the plaintiff are common to trade in beverage industry,
including the beer bottles. These include beer bottles of the brands Kingfisher, Miller
Highlife and Kamenitza.
 The oval and circular shape of labels with insignia is also common to trade giving
reference of several labels by brands like Amstel, Bavaria, Guinness etc.
 The making of grooves on bottles is a common practice which is followed by brands
like Cascade, Budweiser, Bavaria etc.
 The intentions of the plaintiff are not bonafide in filing this suit. The plaintiff is
pressurising bottle manufacturers not to manufacture bottles for the defendant.
Final judgement by the Court:

 The Court held that the defendant undertook that they would within 4 months adopt
a new unique design for HUNTER beer, but this cannot be taken as an undertaking
to no longer use the bottles with impugned design in the market after 4 months.
 According to the Court, the bottle was not new or novel. It was like any other bottle
existing in the market. Therefore, the Court held that prima facie, the plaintiff’s beer
bottle design registration may not worthy of protection and may be liable to be
revoked.
  Further, the Court held that the defendant’s bottle does not appear to be a
fraudulent or obvious imitation of the plaintiff’s bottle design. Therefore, no
injunction was granted in favour of the plaintiff.
Implications of the court decision for managers:

 Composite suits can be filed to save time and resources of the court as well as the
parties.
 The lawsuits are not in danger merely because earlier the complaint was not filed
separately.
 It is a relief to the managers that injunctions cannot be claimed on the basis of
different kinds of intellectual property violation.
 There must be exclusivity to the design in terms of originality and creativity, i.e., the
product design must not recognise with the designs of products already existing in
the market.
 Hence, the managers are to pay close attention to the designs they get registered.