The differences in the impugned design vis-à-vis the suit design are sufficient to defeat the allegation of piracy: Delhi High Court

I.A. 725/2022 (under Order XXXIX Rules 1 and 2 of the CPC). Judgement pronounced on 19th December 2022 by HON’BLE MR. JUSTICE C.HARI SHANKAR.

Issues arise at an interlocutory stage for consideration in the present case Diageo Brands B.V. & Anr. vs Alcobrew Distilleries India Pvt (CS(COMM) 30/2022).  


The plaintiffs alleges piracy by the defendant, under Section 22(1) of the Designs Act, 2000 of their registered Design No. 306577.

The defendant, contends with Section 22(3) read with Section 19(1)(b) and (c), alleges, that the plaintiffs‘ design is bad on account of prior publication, and is lacking in novelty and originality through prior art in the form of two designs, one of which is Design No D562138 and the another submitted to the court for deliberation.

But in the judgement of Diageo Brands B.V. & anr. v. Great Galleon Ventures Pvt. Ltd the argument already stands accepted by the Court upholding the validity of the suit design.

The defendant further contends, piracy, within the meaning of Section 22 of the Designs Act would require near identity between the suit design and the infringing design, which is clearly absent in the present case.

The plaintiffs contend, the scope of novelty analysis of the suit design through prior art is different from the scope of infringement analysis of the suit design in relation to the defendant‘s design. Secondly, they contend that the aspect of novelty has to be seen from the point of view of the ‘instructed eye’ whereas the aspect of infringement would involve the ‘ordinary purchaser’.

The court through its order dated 9th September 2022, required the defendant to address arguments first, as to how the present case could be distinguished from the decision in Diageo Brands B.V. & anr. v. Great Galleon Ventures Pvt. Ltd.

The plaint seeks a decree of permanent injunction and restraining the defendant from dealing in the above manner.


The plaintiffs allege infringement, by the defendant, of their registered Design No. 306577 registered on 22nd March 2019. The suit design was subject matter of earlier design infringement proceedings in Diageo Brands B.V. & anr. v. Great Galleon Ventures Pvt. Ltd. The suite design was the same as the suite design in the current case. In the mentioned case the design was nearly identical whereas in the current case the design differs in several aspects. Therefore are these differences enough to end the allegation of piracy on the defendant.

This judgment disposes of IA 725/2022, under Order XXXIX Rule 1 and 2 of the Code of Civil Procedure, 1908 (CPC). Observations made in this order are only prima facie for the purposes of disposing of the above application of the plaintiff.  

The plaintiff has not been able to make out a case of obvious imitation or fraudulent imitation by the defendant so as to justify injunction, during the pendency of the suit, the defendant from marketing or manufacturing its product in the said bottles.

The application under Order XXXIX Rules 1 and 2 is accordingly dismissed.

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