According to the Delhi High Court, the "visual effect" and "ocular impression of the product as a whole" serve as the standards for establishing whether a registered design has been violated.
The objective is to determine whether there is a significant and general similarity between the two designs rather than to search for minute differences.
"For a design to be infringing, it need not be an identical reproduction. Small size variations are unimportant because the overall and significant similarity is obvious to the unaided eye "Justice Sanjeev Narula's single bench made the observation.
The statement was made when a lawsuit between Great Galleon Ventures and Diageo Brands, the maker of the well-known whisky brand "Black Dog," was being decided.
The maker of "Goa Gold," Great Galleon, was charged with ripping off the plaintiff's "Hipster" bottles, which were modelled after the size and proportions of a smartphone, in terms of appearance.
Plaintiff asserted that the following characteristics are its distinguishing characteristics:
(a) tall, lean and sleek look, (b)
rectangular shape inspired from the shape and
proportion of a smartphone; (c) smooth
rounded shoulders and symmetrical edges;
(d) protruding V-shaped neck situated at themiddle of both shoulders; (e) symmetrically raised and plateau-like front and rear walls; (f) two-toned rimmed and rounded cap; and (g) dimpled bottom.
The court declared absolute the ex-parte judgement awarding interim relief to Diageo Brands and enjoined the defendant from dealing in the allegedly infringing goods until the matter was resolved after finding that the plaintiff had a prima facie case.
The defendant's claim that the plaintiff's bottle design is not "novel" was rejected by the judge.
The defence claimed that since the beginning of time, bottles and hip flasks have been used to transport liquids, and their designs are therefore clearly in the public domain.
However, the court determined that the plaintiff's product is not merely a commercial variation of an earlier design, as the defendant attempted to minimise.
"A bottle is unquestionably a common object with typical features, including a neck, shoulders, etc. However, the Hipster has greatly changed it, giving it recognisable traits and an aesthetic appeal that was unimaginable before. This certainly satisfies the requirement of being "new and original," as it gives the knowledgeable user a completely different perception and qualifies the Plaintiff for exclusivity. As a result, the court dismissed the defendant's "mosaicing" defence.
The defendant argued that the plaintiffs' allegedly registered bottle design was simply created by "cobbling together" well-known numbers. The plaintiffs, however, are permitted to pick and select elements and draw inspiration from other pre-existing designs as long as they produce a fresh or unique design, the court ruled.
Not all designs can be created in an avant-garde manner, fully devoid of any inspiration from earlier works. True novelty lies in the originality of application of existing ideas in a hitherto unknown fashion. Any restriction more stringent than this will stifle the capacity for human innovation.
It also stated that the Court could not carry out this exercise on its own and that it was the defendant's responsibility to demonstrate which specific known designs were allegedly combined to create the Plaintiff's Registered Design.
The bench further clarified that the Designs Act cannot exactly apply the patent law's definition of novelty, and that the term "novelty" in this case simply refers to something that is "fresh and original."